2017-1175, -1760, -1811
THE LEX GROUPDC 1825 K Street, N.W. Suite 103 Washington, D.C. 20006
(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com
In The
United States Court of Appeals For The Federal Circuit
TINNUS ENTERPRISES, LLC, ZURU LTD.,
Plaintiffs – Appellees,
v.
TELEBRANDS CORPORATION, BED BATH & BEYOND, INC.,
FRY’S ELECTRONICS, INC., KOHL’S DEPARTMENT
STORES, INC., THE KROGER COMPANY, SEARS HOLDING
CORPORATION, TOYS ‘R’ US-DELAWARE, INC.,
WALGREENS BOOTS ALLIANCE, INC.,
Defendants – Appellants.
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF TEXAS IN NOS. 6:16-CV-00033-RWS-JDL
AND 6:16-CV-00034-RWS-JDL, JUDGE ROBERT SCHROEDER III.
CORRECTED BRIEF OF APPELLEES
Thomas M. Dunlap Jeffrey D. Ahdoot
David Ludwig DUNLAP BENNETT & LUDWIG PLLC
Robert D. Spendlove 1717 Pennsylvania Avenue, NW, Suite 1025
Eric L. Olavson Washington, DC 20006
DUNLAP BENNETT & LUDWIG PLLC (202) 316-8558
211 Church Street, SE
Leesburg, Virginia 20175
(703) 777-7319
Counsel for Appellees Counsel for Appellees
Brian M. Koide Cortland C. Putbrese
DUNLAP BENNETT & LUDWIG PLLC DUNLAP BENNETT & LUDWIG PLLC
8300 Boone Boulevard, Suite 550 2307 East Broad Street, Suite 301
Vienna, Virginia 22182 Richmond, Virginia 23223
(703) 777-7319 (804) 977-2688
Counsel for Appellees Counsel for Appellees Dated: August 10, 2017
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i
CERTIFICATE OF INTEREST
Counsel for Tinnus Enterprises, LLC certifies that
1. The full name of the party represented is: TINNUS ENTERPRISES,
LLC.
2. The names of the real parties in interest represented are: TINNUS
ENTERPRISES, LLC.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock in the party represented are: NONE.
4. The names of all law firms and the partners and associates that have
appeared for the party in the lower tribunal or are expected to appear for the party
in this Court and who are not already listed on the docket for the current case are:
• FINDLAY CRAFT: Eric Findlay and Debby Gunter
• DUNLAP, BENNETT & LUDWIG: Thomas Croft, Kevin Streit,
Noah Fontanez, W. Calvin Smith, and Ellis Bennett.
• FERGUSON, BRASWELL, FRASER, KUBASTA: Kelly Kubasta
and Dana Campbell
Dated: August 10, 2017 /s/ Thomas M. Dunlap
Thomas M. Dunlap
DUNLAP BENNETT & LUDWIG PLLC
211 Church Street SE
Leesburg, VA 20175
Telephone: (703) 777-7319
Facsimile: (703) 777-3656
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ii
CERTIFICATE OF INTEREST
Counsel for ZURU LTD. certifies that
1. The full name of the party represented is: ZURU LTD.
2. The names of the real parties in interest represented are: ZURU LTD.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock in the party represented are: NONE.
4. The names of all law firms and the partners and associates that have
appeared for the party in the lower tribunal or are expected to appear for the party
in this Court and who are not already listed on the docket for the current case are:
• FINDLAY CRAFT: Eric Findlay and Debby Gunter
• DUNLAP, BENNETT & LUDWIG: Thomas Croft, Kevin Streit,
Noah Fontanez, W. Calvin Smith, and Ellis Bennett.
Dated: August 10, 2017 /s/ Thomas M. Dunlap
Thomas M. Dunlap
DUNLAP BENNETT & LUDWIG PLLC
211 Church Street SE
Leesburg, VA 20175
Telephone: (703) 777-7319
Facsimile: (703) 777-3656
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TABLE OF CONTENTS
Page
CERTIFICATES OF INTEREST ............................................................................... i
TABLE OF CONTENTS ......................................................................................... iii
TABLE OF AUTHORITIES .................................................................................... vi
GLOSSARY OF ABBREVIATIONS ...................................................................... ix
STATEMENT OF RELATED CASES ..................................................................... x
STATEMENT OF THE ISSUES............................................................................... 1
STATEMENT OF THE CASE .................................................................................. 2
I. Commercialization and Enforcement of the Invention ......................... 2
A. Josh Malone Invents Bunch O Balloons ..................................... 2
B. Telebrands Copies Bunch O Balloons ........................................ 3
C. The District Court Preliminarily Enjoins Balloon
Bonanza ....................................................................................... 5
D. Telebrands Copies Bunch O Balloons Again ............................. 6
E. Tinnus Files a New Lawsuit, Moves to Preliminary
Enjoin Battle Balloons, and Presents Evidence of
Irreparable Harm ......................................................................... 7
F. Tinnus’ Evidence Supporting Infringement ............................. 11
G. Tinnus Presents Evidence in Support of Validity ..................... 13
H. The District Court Enters a Second Preliminary
Injunction Against Telebrands .................................................. 19
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iv
II. The Patents-in-Suit .............................................................................. 21
SUMMARY OF THE ARGUMENT ...................................................................... 23
I. The District Court Did Not Err in Finding a Likelihood of
Success on the Merits .......................................................................... 23
II. The District Court Did Not Err in Finding Irreparable Harm ............. 25
ARGUMENT ........................................................................................................... 27
I. Legal Standard ..................................................................................... 27
II. The District Court Correctly Found a Likelihood of Success on
the Merits for the ’282 Patent .............................................................. 28
A. The District Court’s Finding of Likelihood of
Infringement of the ’282 Patent is Unchallenged ..................... 28
B. The District Court Did Not Err in Finding No Substantial
Question of Validity for the ’282 Patent ................................... 29
1. The district court correctly found that Telebrands
failed to raise a substantial question as to
obviousness for the ’282 Patent ...................................... 29
a. The district court did not misinterpret
“fluid” ................................................................... 31
b. The district court did not misapply the
Sufficiently Limited limitation ............................. 33
c. The district court did not err in finding no
inherency .............................................................. 37
2. The District Court Did Not Err in Considering the
Objective Indicia Including Copying ............................. 40
3. This Court Can Consider Other Objective Indicia
that was Before the District Court .................................. 42
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III. The District Court Correctly Found a Likelihood of Success on
the Merits for the ’749 Patent .............................................................. 45
A. The District Court Did Not Err in Finding a Likelihood
of Infringement for the ’749 Patent .......................................... 46
1. The district court did not misconstrue “common
face” ................................................................................ 47
2. The district court did not err in finding that Battle
Balloons likely infringes ................................................. 54
3. The district court consistently applied “second
end” ................................................................................. 56
B. The District Court Did Not Err in Finding No Substantial
Question of Validity for the ’749 Patent ................................... 60
IV. The District Court Did Not Err in Finding Irreparable Harm ............. 61
CONCLUSION ........................................................................................................ 65
CERTIFICATE OF FILING AND SERVICE
CERTIFICATE OF COMPLIANCE
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vi
TABLE OF AUTHORITIES
PAGE(S)
CASES
Abbott Labs. v. Andrx Pharms., Inc.,
452 F.3d 1331 (Fed. Cir. 2006) ..................................................................... 28
Aria Diagnostics, Inc. v. Sequenom, Inc.,
726 F.3d 1296 (Fed. Cir. 2013) ..................................................................... 27
AstraZeneca LP v. Apotex, Inc.,
633 F.3d 1042 (Fed. Cir. 2010) ......................................................... 23, 27, 29
Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629 (Fed. Cir. 2011) ....................................................................... 37
Brown Williamson Tobacco v. Philip Morris,
229 F.3d 1120 (Fed. Cir. 2000) ..................................................................... 43
Elbex Video, Ltd. v. Sensormatic Electronics Corp.,
508 F.3d 1366 (Fed. Cir. 2007) ..................................................................... 49
Glaxo Grp. Ltd. v. Torpharm, Inc.,
153 F.3d 1366 (Fed. Cir. 1998) ............................................................... 42, 45
Leo Pharm. Prods. v. Rea,
726 F.3d 1346 (Fed. Cir. 2013) ..................................................................... 45
Oakley, Inc. v. Sunglass Hut Int’l,
316 F.3d 1331 (Fed. Cir. 2003) ..................................................................... 27
Par Pharm., Inc. v. TWi Pharms., Inc.,
773 F.3d 1186 (Fed. Cir. 2014) ..................................................................... 27
Polymer Techs., Inc. v. Bridwell,
103 F.3d 970 (Fed. Cir. 1996) ....................................................................... 28
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vii
PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299 (Fed. Cir. 2008) ..................................................................... 29
Procter & Gamble Co. v. Kraft Foods Glob., Inc.,
549 F.3d 842 (Fed. Cir. 2008) ................................................................. 27, 28
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568 (Fed. Cir. 1996) ....................................................................... 40
Research Corp. Technologies v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010) ....................................................................... 29
Sepulvado v. Jindal,
729 F.3d 413 (5th Cir. 2013) ......................................................................... 28
Tinnus Enters., LLC v. Telebrands Crop.,
2016 WL 7230903 (E.D. Tex. Dec. 13, 2016) .............................................. 13
TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc.,
529 F.3d 1364 (Fed. Cir. 2008) ..................................................................... 35
Tinnus Enters., LLC v. Telebrands Corp.,
846 F.3d 1190 (Fed. Cir. 2017) ..............................................................passim
Trebro Mfg., Inc. v. Firefly Equip., LLC,
748 F.3d 1159 (Fed. Cir. 2014) ..................................................................... 27
WBIP, LLC v. Kohler Co.,
829 F.3d 1317 (Fed. Cir. 2016) ..................................................................... 41
Winter v. Natural Res. Def. Council, Inc.,
555 U.S. 7 (2009) ........................................................................................... 63
STATUTES
35 U.S.C. § 103 .............................................................................................. 5, 24, 51
35 U.S.C. § 112 .......................................................................................................... 6
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viii
35 U.S.C. § 112(b) ..................................................................................................... 5
35 U.S.C. § 282 ........................................................................................................ 29
OTHER AUTHORITIES
“A father-of-eight from Texas has come up with an invention that could
transform the way hot summer days are spent. . . .” (ABC News)
(http://abcnews.go.com/Lifestyle/father-creates-genius-water-
ballooninvention/story?id=24698486) ..................................................................... 15
http://gizmodo.com/this-simple-contraption-lets-you-make-100-water-
balloon-1608997035 .................................................................................................. 4
“[A] Texas dad has invented a contraption that could alter the course of
summer: Bunch O Balloons, a gadget that allows anyone with a hose to fill
dozens of water balloons at the same time.” (People)
(http://www.people.com/article/waterballoon- kickstarter)..................................... 15
“Hero Builds a Genius Machine That Can Fill 100 Water Balloons in a
Minute.” (Time) (http://time.com/3029563/hero-builds-a-genius-machine-
that-can-fill-100-water-balloons-in-a-minute) ......................................................... 15
“Just as gunpowder and the atomic bomb revolutionized human warfare as
we know it, this clever invention by Josh Malone, a Texas-based father of
eight, will change summer water balloon warfare forever.” (Bored Panda)
(http://www.boredpanda.com/water-balloon-bunch-o-balloons-josh-malone) ....... 15
“This genius dad figured out how to fill 100 water balloons in one minute. .
Forget Potato salad, because there’s now a Kickstarter for a cause that
actually demands attention: water balloon fights.” (Buzzfeed)
(https://www.buzzfeed.com/rachelzarrell/balloonbonanza?utm_term=.qyj56
YbP1#.wk2BE9Ze5) ................................................................................................ 15
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ix
GLOSSARY OF ABBREVIATIONS
Abbreviation Description
Blue Brief Opening Brief of Defendants-Appellants
Board Patent Trial and Appeal Board
Boise U.S. Pat. Application Pub. No. US 2008/0121309
(Appx1848-1896)
Cooper U.S. Pat. No. 5,826,803 (Appx2258-2264)
Donaldson U.S. Pat. No. 5,014,757 (Appx2596-2605)
Lee U.S. Pat. Application Pub. No. US 2005/0004430
(Appx2274-2284)
Patents-in-Suit ’282 Patent and ’749 Patent
Retailer Action Tinnus Enterprises Inc. v. Wal-Mart, Inc. d/b/a Wal-
Mart, No. 6:16-cv-00034 (E.D. Tex. filed Jan. 26, 2016)
Retailers Bed Bath & Beyond Inc, Fry’s Electronics, Kohl’s
Department Stores Inc, Sears Holding Corporation, The
Kroger Company, Toys “R” Us-Delaware, Inc., and
Walgreens Boots Alliance, Inc., collectively
R&R Report and Recommendation of United States Magistrate
Judge (Appx1-29)
Saggio U.S. Patent Application Pub. No. US 2013/0118640
(Appx2266-2272)
Telebrands Telebrands Corporation and the Retailers
Tinnus Tinnus Enterprises, LLC and ZURU Ltd., collectively
Tinnus I Tinnus Enters., LLC v. Telebrands Corp.,
No. 6:15-cv-00551-RC-JDL (E.D. Tex. filed Dec. 16,
2015)
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Tinnus I Appeal Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190
(Fed. Cir. 2017)
Tinnus II Tinnus Enters., LLC v. Telebrands Corp., No. 6:16-cv-
00033-RWS-JDL (E.D. Tex. filed Jan. 26, 2016)
Tinnus III Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:17-
cv-00170-RWS-JDL (E.D. Tex. filed Mar. 20, 2017)
USPTO United States Patent & Trademark Office
Wal-Mart Wal-Mart, Inc. d/b/a Wal-Mart
Weir U.S. Pat. No. 6,478,651 (Appx2652-2653)
ZURU ZURU Ltd.
’066 Patent U.S. Patent No. 9,051,066
’282 Patent U.S. Patent No. 9,315,282
’749 Patent U.S. Patent No. 9,242,749
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STATEMENT OF RELATED CASES
No other appeal in or from these district court actions was previously before
this or any other court.
The following federal court cases may be directly affected by the Court’s
decision in this appeal:
1. In Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:15-cv-
00551-RC-JDL (E.D. Tex. filed Dec. 16, 2015) (“Tinnus I”),
Appellees Tinnus Enterprises, LLC and ZURU Ltd. (collectively,
“Tinnus”), accuse Telebrands Corporation and other defendants of
infringing U.S. Patent No. 9,051,066 (“the ’066 Patent”), which is the
parent patent to the two patents at issue here: U.S. Patent Nos.
9,242,749 (“the ’749 Patent”) and 9,315,282 (“the ’282 Patent”)
(collectively, “the Patents-in-Suit”).1 The district court preliminarily
enjoined Telebrands based on its infringement of the ’066 Patent.
Telebrands appealed that decision and this Court affirmed. Tinnus
Enters., LLC v. Telebrands Corp., 846 F.3d 1190 (Fed. Cir. 2017)
(“Tinnus I Appeal”). Tinnus I is currently stayed pending the outcome
of Tinnus’s appeal of the Patent Trial and Appeal Board’s (“Board”)
1 This Brief refers to “Telebrands” collectively as Telebrands Corporation and the
Retailers (defined below).
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final written decision finding the ’066 patent unpatentable as
indefinite (see below).
2. In Tinnus Enterprises, LLC v. Telebrands Corp., No. 17-1726
(Fed. Cir.), Tinnus is appealing the Board’s final written decision
finding that the term “substantially filled” in the ’066 Patent is
indefinite under 35 U.S.C. § 112(b).
3. In Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:17-cv-
00170-RWS-JDL (E.D. Tex. filed Mar. 20, 2017) (“Tinnus III”),
ZURU has accused Telebrands, Bulbhead.com, and Bed Bath and
Beyond, Inc. of infringing the Patents-in-Suit and U.S. Patent Nos.
9,527,612 and 9,533,779. Tinnus has accused Telebrands’ third
iteration of its multiple balloon filling product, Easy Einstein
Balloons. The district court granted Tinnus’ motion for a preliminary
injunction against defendants and a preliminary injunction order has
issued. Defendants are appealing that order and this Court has
deemed that appeal to be a companion case to this appeal.
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STATEMENT OF THE ISSUES
1. Whether the district court properly found likelihood of success on the
merits where:
a. with respect to the ’282 Patent, Telebrands (i) does not
challenge the district court’s likelihood of infringement finding
on appeal and (ii) has failed to show that the district court
abused its discretion in finding no substantial question of
validity based on obviousness or
b. alternatively, with respect to the ’749 patent, Telebrands has
failed to show that the district court abused its discretion in
finding (i) likely infringement and (ii) no substantial question of
validity based on obviousness.
2. Whether the district court abused its discretion in finding a likelihood
that Tinnus would suffer irreparable harm in the absence of an injunction.
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STATEMENT OF THE CASE
I. Commercialization and Enforcement of the Invention
This Court is already acquainted with some of the basic facts having already
rendered its opinion in the Tinnus I Appeal. See 846 F.3d 1194-1202.
A. Josh Malone Invents Bunch O Balloons
As the Court may recall, in early 2014, Josh Malone—the inventor of the
Patents-in-Suit—finalized his designs for a revolutionary new toy product (a
product that is now commercially offered as “Bunch O Balloons”), which would
allow someone to fill as many as 100 water balloons in approximately 60 seconds.
Appx1326, ¶2. The device contains a hose attachment and the other end is fitted
with 35 or 37 balloons. Appx1327, ¶3. When the hose is turned on, the balloons
automatically fill and then seal themselves upon their release from the hose
attachment. Id.
Immediately after developing his first successful Bunch O Balloons
prototype, Appx1326, ¶2, Mr. Malone, through his company, Tinnus Enterprises,
LLC, filed a patent application for his invention on February 7, 2014. Appx1327,
¶4. In March 2014, Mr. Malone began taking steps to have his Bunch O Balloons
product manufactured. Appx1327, ¶5.
To help raise the necessary funds to manufacture and market his invention,
Mr. Malone launched a Kickstarter.com internet campaign on July 22, 2014.
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Appx1327, ¶6. Mr. Malone’s invention was an instant hit. Funding via Kickstarter
reached nearly $1 million, and his Kickstarter video featuring the Bunch O
Balloons product has had approximately 2.9 million views. Appx1327, ¶¶7-8.
Within days, various national media outlets, including, among others, Sports
Illustrated, Time, People, Good Morning America and the Today Show, all covered
and reported on Mr. Malone’s novel Bunch O Balloons invention. Appx1327-
1328, ¶¶9-10. Bunch O Balloons went viral on the web. Id., ¶10.
In August 2014, Mr. Malone and ZURU Ltd. (“ZURU”), a small family-
owned toy company founded in New Zealand, partnered to manufacture, market,
and sell the Bunch O Balloons product. Appx1328, ¶¶14-15. Tinnus licensed to
ZURU any present or future patent rights owned by Tinnus relating to the Bunch O
Balloons product. Id. at ¶15; see also Appx1334, ¶3.
B. Telebrands Copies Bunch O Balloons
After learning about the Bunch O Balloons product through Kickstarter,
Telebrands decided to copy and sell a virtually-identical replica of Tinnus’s Bunch
O Balloons product, which Telebrands called “Balloon Bonanza.” There is no real
dispute that Telebrands copied Bunch O Balloons. Telebrands only disputes
whether copying should be considered; it does not dispute the fact that copying did
occur. See Blue Brief at 39-40 (alleging that district court’s “reliance” on copying
was error but not disputing that copying did occur).
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Documents produced by Telebrands confirm that Telebrands copied
Tinnus’s Bunch O Balloons product. Appx196-204; see also Appx1328-1329,
¶¶15-17; Appx1334, ¶¶4-5. For example, on the same day that Mr. Malone
launched his Kickstarter.com campaign for Bunch O Balloons (July 22, 2014), an
employee in Telebrands’s new product division emailed Telebrands’s executives
about Mr. Malone’s product and the Kickstarter.com campaign. Appx203.
Shortly thereafter, Telebrands retained a contractor to systematically and
deliberately copy Mr. Malone’s Bunch O Balloons product. Email communications
between Telebrands and this contractor indisputably confirm that Mr. Malone’s
Bunch O Balloons product was deliberately copied. See Appx196-204. The district
court relied on these emails in its analysis: “Plaintiffs [sic] have submitted
Telebrands’ emails that discuss the development of Telebrands’ balloon products,
and state, for example: ‘[t]his is only the first proto[type] so assume this will have
37 filler rods and balloons (or more or less) like theirs and work exactly like the
original ‘Bunch of Balloons.’” Appx23 (quoting Appx200) (emphasis in original).
As noted above, the Bunch O Balloons device is fitted with 35 or 37 balloons.
Appx1327, ¶3. The district court only referenced one of numerous emails that
unquestionably demonstrate copying. These emails unambiguously reference and
compare the product Telebrands was developing (i.e., copying) and the Bunch O
Balloons product. See, e.g., Appx196-204.
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In December 2014, Telebrands began marketing and offering for sale its
Balloon Bonanza product, Appx1328, ¶16, which was well-after Mr. Malone had
already filed a patent application (February 7, 2014), begun manufacturing Bunch
O Balloons (March 2014), gone public with his invention (July 22, 2014), and
marketed and sold his product. Appx1326, ¶2, Appx1327, ¶¶5-6, Appx1328, ¶13.
C. The District Court Preliminarily Enjoins Balloon Bonanza
On June 9, 2015, the United States Patent and Trademark Office (“USPTO”)
issued the ’066 Patent. Appx1700-1711. Tinnus filed suit against Telebrands that
same day. Appx1277. Tinnus quickly moved for a preliminary injunction against
Telebrands’ Balloon Bonanza product, which the district court granted. Appx1303-
1499, Appx1299-1302. Telebrands appealed that decision and this Court affirmed.
See Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190 (Fed. Cir. 2017)
(“Tinnus I Appeal”). This Court found, among other things, that the district court
did not err in finding that Telebrands failed to raise a substantial question of
invalidity under either 35 U.S.C. § 103 or 35 U.S.C. § 112(b), and that Tinnus
demonstrated a likelihood of irreparable harm.
With respect to § 103, this Court affirmed the district court’s conclusion that
Telebrands’ obviousness argument (for the Cooper, Saggio, and Lee references)
failed to raise a substantial question of validity, finding that “under a plain error
review, we cannot say that the district court committed a clear or obvious error
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when it found insufficient motivation to combine these disparate references.” Id.
at 1207. With respect to § 112, this Court affirmed the district court’s finding that
Telebrands failed to meet their burden in showing that the term “substantially
filled” found in claim 1 was indefinite. Id. at 1197-98.
D. Telebrands Copies Bunch O Balloons Again
With the district court’s injunction preventing it from selling Balloon
Bonanza, Telebrands began selling in December 2015 a “new” multiple balloon
filling product under various names, including Balloon Bonanza HD, Battle
Balloons, Balloon Bonanza HD Color Burst, Battle Balloons Color Combat, and
Battle Balloons Color Burst (collectively, “Battle Balloons”). Appx209, ¶5,
Appx137, ¶40. Battle Balloons was a modification of the first-generation product
(Balloon Bonanza) in only one respect—the housing on Battle Balloons was
modified from having a flat planar shape to a conical shape. Appx214-216.
Photographs of both products are reproduced below:
Balloon Bonanza Battle Balloons
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E. Tinnus Files a New Lawsuit, Moves to Preliminary Enjoin Battle
Balloons, and Presents Evidence of Irreparable Harm
On January 26, 2016, the ’749 Patent issued. That same day, Tinnus filed a
lawsuit claiming that Telebrands’ new Battle Balloons product infringes the ’749
Patent in the matter below. Appx112; Tinnus Enters, LLC v. Telebrands Corp.,
6:16-cv-00033-RWS-JDL (E.D. Tex. filed Jan. 26, 2016) (“Tinnus II”). On the
same day, Tinnus Enterprises, LLC individually filed a separate lawsuit against
Wal-Mart, Inc. claiming infringement of the ’749 Patent. Tinnus Enterprises Inc.
v. Wal-Mart, Inc. d/b/a Wal-Mart, No. 6:16-cv-00034 (E.D. Tex. filed Jan. 26,
2016) (“the Retailer Action”). On April 19, 2016, the ’282 Patent issued and
Tinnus amended its complaint to include the newly issued ’282 Patent. Appx89-
111, Appx132. Tinnus Enterprises, LLC separately amended its complaint to
include the ’282 Patent and to add the additional retailer defendants Bed Bath &
Beyond Inc, Fry’s Electronics, Kohl’s Department Stores Inc, Sears Holding
Corporation, The Kroger Company, Toys “R” Us-Delaware, Inc., and Walgreens
Boots Alliance, Inc.2 (collectively “the Retailers”).3
2 Wal-Mart has since been dismissed from the district court action.
3 On June 16, 2016, the district consolidated Tinnus II (6:16-cv-00033) with the
Retailer Action (6:16-cv-00034) for pre-trial purposes. Appx12776-12777. ZURU
Ltd. was added to the Retailer Action as an involuntary plaintiff. Appx12785.
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Two weeks after the ’282 Patent issued, on May 3, 2016, Tinnus filed a
second motion for preliminary injunction, this time seeking an injunction covering
Telebrands’ Battle Balloons product. Tinnus supported its motion with substantial
evidence, including numerous expert reports, fact witness declarations, and fact
witness testimony.
Specifically, Tinnus presented extensive evidence and argument which
demonstrated that they had suffered irreparable harm as a result of Telebrands’
actions.4 Tinnus’ evidence included two consumer confusion surveys that showed a
likelihood of consumer confusion between ZURU’s and Telebrands’ competing
balloon filling products. Appx1161-1269. The second survey also showed that
consumers had likely confused whether Tinnus’ or Telebrands’ multiple balloon
filling products were the original, first-to-market product. Appx1234-1235; see
also generally Appx1227-1269. Tinnus also presented declarations and testimony
by a branding expert (Ms. Rhonda Harper) and an expert economist (Dr. Ray
Perryman), who each opined that Telebrands had severely harmed Tinnus and that
further harm was likely without an injunction.5
4 See Appx4361-4370, Appx4372-4373, Appx4377-4389, Appx4402-4403,
Appx4456-4458, Appx4473-4479, Appx5557, Appx5560, Appx5606-5620.
5 Appx884-1119, Appx2842-2938, Appx1121-1160, Appx4377-4388 at 25:4-
36:11, Appx4472-4476 at 38:5-41:7.
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9
In summary, Tinnus’ evidence showed that they were suffering harm in the
form of:
• Direct competition in a two-player market (Appx907-908, ¶51, Appx914-
915, ¶64, Appx1272-1275, ¶¶4, 8, 13-14, 16-18, Appx1132-1133, ¶51,
Appx4403 at 51:4-12);
• Consumer confusion (Appx1120-1269 (two consumer confusion surveys
conducted by Ms. Harper), Appx2868-2870, ¶¶56-57, Appx2902,
Appx2913, App2923, Appx2926-2936, Appx4368-4370 at 16:20-18:3,
Appx4474-4476 at 39:18-41:7);
• Harm to ZURU’s relationships and loss of goodwill with its retailer
customers (Appx2837-2841, Appx4366-4368 at 14:8-16:18);
• Likely continued price erosion (Appx908-909, ¶¶52-53, Appx2858-2867,
¶¶32-53, Appx4361-4366 at 9:13-14:7, Appx4378-4381 at 26:6-29:18);
• Harm to reputation and loss of goodwill with consumers (Appx916-17,
¶¶67-70, Appx1125-1129, Appx1134-1136, ¶¶52-60, Appx1140,
Appx4368-4370 at 16:20-18:3, Appx4385-4388 at 33:3-36:11);
• Loss of market position (Appx2855-2856, ¶25) and loss of business
opportunities (id.; see also Appx2837-2841, Appx4366-4368 at 14:8-
16:18);
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10
• Loss of mindshare (id.; Appx912-916, ¶¶59-66, Appx2871-2873, ¶¶60-67,
Appx1124-1132, ¶¶23-51, Appx1140, Appx1226-1235, Appx4381-4385 at
29:16-33:7, Appx4475-4476 at 40:8-41:7).
For example, ZURU received numerous reviews and emails from customers
that complained how the colored balloons stained their skin and clothes.6 Some of
these complaints were posted on ZURU’s own Amazon.com webpage, harming
ZURU’s online star-rating and reputation. See, e.g., Appx2913. Considering that
ZURU had never sold colored-water multiple balloon filling products, Appx4369
at 17:1-3, and it being undisputed that ZURU and Telebrands were at least the two
main competitors in the mass-water-balloon market, Appx5560 at 12:20-23, the
district court found that Telebrands’ Battle Balloons product was the likely culprit
behind these complaints. Appx26, Appx40. The district court therefore found that
Telebrands had confused consumers and caused loss of goodwill. See id.
As another example of the type of harm Tinnus had suffered, the Magistrate
Judge found that Telebrands’ direct competition with ZURU Ltd. had harmed
ZURU Ltd.’s relationship with an important retail customer—Walmart. Appx26.
Relying on evidence offered by ZURU Ltd. (Appx4367-4368 at 15:2-16:18,
Appx2837-2841), the Magistrate Judge found that “Wal-Mart has indisputably put
all retail relationships with ZURU on hold for 2017,” and that but-for Telebrands,
6 See, e.g., Appx4368-4370 at 16:20-18:3, Appx2868-2870, ¶¶56-57, Appx2902,
Appx2913, App2923, Appx2926-2936.
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11
that relationship never would have been harmed. Appx26. The Magistrate Judge
further found that “the harm here is that ZURU was deprived of the ability to come
to the market with its monopoly right, and deprived of the opportunity to build new
and gainful relationships with retailers absent Telebrands’ presence in the market.”
Appx26. The District Judge agreed with these findings, stating that “the Magistrate
Judge properly concluded that [Tinnus’] relationships with their retailers were
affected by Telebrands because [Tinnus] would not be in court against their
retailers if not for Telebrands’s actions.” Appx41.
F. Tinnus’ Evidence Supporting Infringement
Tinnus also presented substantial evidence and argument in support of
infringement.7 In particular, Tinnus submitted an expert declaration of Dr. Barry
M. Kudrowitz, in which he opined that Battle Balloons infringed the asserted
claims of the ’282 and ’749 Patents. Appx213-239, Appx3000-3010. Further, at the
preliminary injunction hearing, Dr. Kudrowitz testified regarding infringement.
Appx4458-4463. To show that each claim limitation was met, Dr. Kudrowitz also
submitted a claim chart with images of the Battle Balloons products from the
Battle Balloons website, actual photographs of the products, images from the
product instruction manual, and other screenshots of the website and related
7 Appx213-239, Appx3000-3010, Appx4458-4463, Appx2809-2810, Appx5098,
Appx5102-5104, Appx5589-5596.
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12
product videos. Appx213-239, Appx3000-3010. Tinnus also submitted the actual
Battle Balloons products as evidence of infringement. Appx8, Appx185.
As noted by the district court, Telebrands raised no objections to the
Magistrate Judge’s finding that Battle Balloons likely infringes the ’282 Patent.
Appx32. Similarly, on appeal, Telebrands does not challenge the district court’s
finding that Battle Balloons likely infringes the ’282 Patent. Instead, Telebrands
limits its infringement defenses to the ’749 patent on appeal. Blue Brief at 40-58.
Specifically, Telebrands claims that the “second end” and “common face”
limitations of the ’749 Patent are not present in its Battle Balloons product. Id.
As noted by the district court, those terms were construed in the Tinnus I
litigation. Appx11-14. In Tinnus I, the district court construed the term “second
end” to mean “an outer limit of the housing distinct from the first end,” and the
term “common face” was construed to mean “a shared outer surface of the housing
through which a plurality of holes extend.” Appx12-13.
In the Report and Recommendation of United States Magistrate Judge
(“R&R”), the Magistrate Judge adopted the district court’s prior constructions, but
clarified that the meaning of the “outer limit” term in the construction of “second
end” was synonymous with “outer surface.” Appx14. The Magistrate Judge
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13
clarified his prior construction of the term because the parties’ experts disputed the
meaning of the district court’s construction.8 Id.
After carefully reviewing all the evidence and applying those claim
constructions, the district court found that the Battle Balloons product infringed
both the “second end” and “common face” limitations of the ’749 patent. Appx14,
Appx32-34.
G. Tinnus Presents Evidence in Support of Validity
Tinnus also presented extensive evidence to rebut Telebrands’ invalidity
defense of obviousness. To show non-obviousness, Tinnus submitted a declaration
by Dr. Kudrowtiz, who opined that Telebrands had not identified prior art which
showed each and every claim limitation of the patented invention.9 Appx2960-
2979, ¶¶50-97. Tinnus also submitted evidence of objective indicia that included:
8 After the injunction issued against Battle Balloons, due to Telebrands’
“continuously modifying interpretations of the Court’s construction,” the district
court again explained the meaning of “second end” to Telebrands. Tinnus II, 2016
WL 7230903, at *7 (E.D. Tex. Dec. 13, 2016). The district court explained that
“the language of the patent is clear in that it requires both a ‘first end’ and a
‘second end’ and they must be distinct. The Court has stated this from the outset.
The outer limit is simply synonymous with an ‘end’ of the housing as a person of
ordinary skill in the art would understand the plain and ordinary meaning of that
word. The ‘second end’ must be an end of the housing. There is no support in the
intrinsic record that ‘second end’ must be ‘one of at least two lengthwise limits.’”
Id.
9 Dr. Kudrowitz offered analysis as to Telebrands’ indefiniteness and written
description challenges as well. Appx2956-2960.
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14
(1) copying by Telebrands (Appx196-204; see also Appx1328-1329,
¶¶15-17, Appx1334, ¶¶4-5);
(2) commercial success for Tinnus, ZURU, and Telebrands (Appx1327-
1328, ¶¶6-10, Appx2848-2857, ¶¶13-27, Appx3034-3035, Appx4388-
4389 at 36:22-37:20.)
(3) praise by others (Appx2981-2983, Appx2875-2891, Appx3195-3416,
Appx4465-4466 at 30:21-32:12);
(4) long-felt need (Appx2983, Appx2857, ¶27, Appx3164 at [0003-
0004]);
(5) failure by others (Appx2983-2984);
(6) decades-long time lapses between the prior art and the filing date of
the invention (Appx2983); and
(7) thirty-five licensing requests from major toy companies such as
Hasbro (Appx2852-2853, ¶20).
As discussed, when Mr. Malone launched his July 2014 Kickstarter
campaign, the product went viral online and went on to raise almost $1 million in
funding, an extremely rare occurrence. Appx2848-2850, ¶¶13-15, Appx1327-1328,
¶¶6-10. Notable publications such as Time Magazine praised the invention,
recognizing a long-felt need for a product that could rapidly fill and self-tie water
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15
balloons.10 Appx2982, Appx2889. Here is just a small sampling of articles praising
Bunch O Balloons:
• “Hero Builds a Genius Machine That Can Fill 100 Water Balloons in a
Minute.” (Time) (http://time.com/3029563/hero-builds-a-genius-machine-
that-can-fill-100-water-balloons-in-a-minute) (Appx2889).
• “[A] Texas dad has invented a contraption that could alter the course of
summer: Bunch O Balloons, a gadget that allows anyone with a hose to fill
dozens of water balloons at the same time.” (People)
(http://www.people.com/article/waterballoon- kickstarter) (Appx2886).
• “A father-of-eight from Texas has come up with an invention that could
transform the way hot summer days are spent. . . .” (ABC News)
(http://abcnews.go.com/Lifestyle/father-creates-genius-water-
ballooninvention/story?id=24698486) (Appx3036).
• “This genius dad figured out how to fill 100 water balloons in one minute. . . .
Forget Potato salad, because there’s now a Kickstarter for a cause that
actually demands attention: water balloon fights.” (Buzzfeed)
(https://www.buzzfeed.com/rachelzarrell/balloonbonanza?utm_term=.qyj56
YbP1#.wk2BE9Ze5) (Appx2877).
• “Just as gunpowder and the atomic bomb revolutionized human warfare as
we know it, this clever invention by Josh Malone, a Texas-based father of
eight, will change summer water balloon warfare forever.” (Bored Panda)
(http://www.boredpanda.com/water-balloon-bunch-o-balloons-josh-malone)
(Appx2876).
After the Kickstarter campaign ended, approximately 35 companies,
including major game and toy manufacturers such as Hasbro (one of the largest toy
companies in the world), approached Mr. Malone about licensing the patent.
Appx2852-2853, ¶20. After consideration, Mr. Malone chose to place his 10 Indeed, Tinnus’ own expert was aware of Bunch O Balloons and its Kickstarter
campaign for over a year before he was even contacted by counsel for Plaintiffs to
act as an expert in this case. Appx3034, ¶101.
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16
intellectual property with ZURU by way of an exclusive licensing agreement.
Appx2853, ¶20.
The press and popularity of Bunch O Balloons was so widespread that it
quickly caught the attention of Telebrands. See Appx203. As noted by the district
court, on the same day that the Kickstarter campaign launched, “one of
[Telebrands’ product development] employees sent a link of an article praising
Plaintiffs’ Bunch O Balloons product to Telebrands’s CEO.” Appx38, Appx203.
Impressed with Bunch O Balloons (as was everyone else), Telebrands soon
thereafter copied Mr. Malone’s Bunch O Balloons product. See Appx196-204.
Both ZURU and Telebrands independently went on to achieve success with
their respective multiple balloon filling products.11 Appx2851-2857, ¶¶18-27.
Bunch O Balloons is ZURU’s best-selling product ever both worldwide and in the
United States. Appx2851, ¶18. ZURU’s overall company revenue skyrocketed due
to the success of Bunch O Balloons. Id. Indeed, sales for Bunch O Balloons are on
track to eclipse one of the best-selling water toys of all-time. Appx2853, ¶21.
Additionally, Telebrands’ Chief Operating Officer and Executive Vice President
Bala Iyer similarly testified that Telebrands’ Battle Balloons product was
successful. Appx2856, ¶26, Appx3420 at 33:7-15.
11 Tinnus’ expert, Dr. Kudrowitz, opined that Tinnus’ Bunch O Balloons product is
coextensive with claim 1 of the ’749 patent and claims 1-3 of the ’282 patent.
Appx3035, ¶103.
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17
Bunch O Balloons has also won numerous industry accolades. Appx2850-
2851. For example, in January 2016, Bunch O balloons won the 2016 Toy Award
for the “SchoolKids” category at Spielwarenmesse, a global toy fair hosted in
Nuremberg, Germany. Appx2850-2851, ¶16. The Spielwarenmesse is the world’s
leading fair for the toy industry with over 2,800 exhibitors from 60+ nations and
more than 70,000 trade visitors from 120 nations. Id. The toys are judged based on
their enjoyment, originality, safety, workmanship and quality, understandability
and potential for trade success. Id. The jury was sufficiently impressed with Bunch
O Balloons to declare it a superb product. Id.
Bunch O Balloons was also awarded the overall “Toy of the Year”
distinction in addition to winning the Outdoor category, at the 2015 Australian Toy
Association Product of the Year Awards in Melbourne. Appx2851, ¶17. In just
three months, the product was the best-selling summer toy in Australia. Id.
In addition to presenting evidence of praise by others and a long-felt need,
Tinnus also presented evidence of failure by others. Appx2983-2984. For example,
Dr. Kudrowitz noted that the prior art Donaldson reference would not operate as
described to automatically and detach and seal an air-filled balloon—and that
Donaldson would not work with a non-compressible fluid like water. Appx2983-
2984, ¶110. As another example, Dr. Kudrowitz noted that the Saggio prior art
application represented a failed attempt to solve the water balloon problem, as that
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18
application was rejected for non-enablement.12 Appx2984, ¶111. Indeed, Dr.
Kudrowitz testified that “[f]rom my own experience in the toy industry, I am aware
that the problem of filling multiple balloons simultaneously and automatically
sealing them has been a daunting one.” Appx2983, ¶109.
Tinnus also presented evidence with respect to the chronology of the prior
art. Appx2984, ¶112. Specifically, Dr. Kudrowitz observed “[t]hat the various prior
art references Telebrands has cited are spread over several decades is, to me, also
telling: Donaldson dates to 1990; Cooper, to 1997; Weir, to 1999; Lee, to 2004;
Saggio, to 2012; and Air Force 4 Inflator, to 2013.” Id. Dr. Kudrowitz opined that
this “evidences the failure of others to solve the problems solved by the invention
described and claimed in the ’749 and ’282 Patents and embodied in Tinnus’
Bunch O Balloons product.” Id.
Further, Dr. Kudrowitz testified at the hearing as to why he believed the
patents to be non-obvious, including that Telebrands had failed to show each and
every claim limitation in the prior art. Appx4464-4466 at 29:15-31:12. Also at the
hearing, Dr. Perryman testified that Bunch O Balloons was a successful product.
12 The 2012 Saggio application disclosed in the specification that “[t]he time and
energy required to tie multiple water balloons is often significant and often
interferes with producing a large number of filled water balloons. Thus, there is a
need for a water balloon that does not require tying and a system/method of
providing a plurality of water balloons relatively quickly.” Appx3164 at [0003-
0004] (emphasis added).
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Appx4388 at 36:18- 37:20. In short, Tinnus presented substantial evidence
regarding the objective indicia of non-obviousness.
H. The District Court Enters a Second Preliminary Injunction
Against Telebrands
On July 12, 2016, the Magistrate Judge issued the R&R, recommending that
Tinnus’ motion for a preliminary injunction be granted. Appx1-29. Telebrands
objected to the R&R and requested oral argument, which the district court granted,
allowing Telebrands a second opportunity to present all of its arguments.
Appx4657, Appx4949. After considering the parties’ substantial briefing, the
testimony of witnesses (both live at the hearing and by declaration), and lengthy
oral argument by the parties’ counsel in two hearings, the district court granted
ZURU’s motion for preliminary injunction on September 29, 2016. Appx30-42.
In that opinion, which also incorporated the 29-page R&R, Appx1-29, the
District Judge found that the ’282 and ’749 Patents were likely infringed. Appx32-
34. The District Judge also concluded that there was no substantial question as to
the validity of the ’066 patent. Appx35-40. In addition, the District Judge found
that Telebrands’ actions had caused irreparable harm to Tinnus. Appx40-41.
Subsequently, on October 31, 2016, the district court issued an order
enjoining Telebrands “from making, using, importing, marketing, advertising,
offering to sell, or selling in the United States the Battle Balloons product or any
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20
colorable imitation of the same that infringes the ’749 and/or the ’282 Patent.”
Appx46.
After the district court granted Tinnus’ motion for a preliminary injunction,
Telebrands filed two additional motions: a motion for the court to reconsider the
preliminary injunction and a motion to stay the preliminary injunction. The district
court denied both motions. Appx6854-6868. In its opinion, the district court stated
that “[w]hile Telebrands utilized ten pages of its brief to reargue its positions to the
Court and explain why it disagrees with the Court’s decision, Telebrands has not
identified any finding which amounted to an abuse of the Court’s discretion.” Id. at
7.
For example, in its motion for a stay, Telebrands re-urged the same non-
infringement arguments with respect to “second end.” Id. at 7-8. The district court
stated that “[a]s the Court has repeatedly explained, there is no support for such a
limiting construction [as a ‘linear limit’ for ‘second end’], and therefore
Telebrands does not have a viable non-infringement argument by arguing that the
‘second end’ is limited to a linear end of the housing.” Id. at 8. For “common
face,” the district court stated that “[t]he Court has continued to understand and
assess the moving interpretations of Telebrands’s proposal for the term ‘common
face’ . . . Telebrands’s argument again presents a disagreement with the Court but
does not clearly showcase an abuse of discretion.” Id. at 9.
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21
Telebrands now appeals the issuance of the district court’s preliminary
injunction orders and its denial of Telebrands’ motion for reconsideration.
II. The Patents-in-Suit
The ’282 and ‘749 Patents are both directed to a system and method for
simultaneously filing multiple containers with fluid. Appx108, col. 1:22-24;
Appx97, col. 1:20-22. One application of the ’066 Patent is the mass-filling of
water balloons, as shown in the embodiment depicted in Figure 1:
Appx103; Appx91.
The ’749 Patent issued from a continuation of the application that issued as
the ’066 Patent. Appx89. The ‘282 Patent issued from a continuation of the
application that issued as the ‘749 Patent. Appx100. The ’749 and ’282 Patents
Case: 17-1175 Document: 73 Page: 34 Filed: 08/10/2017
22
share a common specification with the ’066 Patent, which was asserted in Tinnus I
and discussed by this Court in the Tinnus I Appeal.
As this Court noted in the context of the ’066 Patent, the specification refers
to a plurality of containers 18—balloons in the embodiment above—being
clamped to the tubes 16 using elastic valves 20. Tinnus I Appeal, 846 F.3d at
1196. The Court noted that the specification “refers to the force applied by the
elastic valves to keep the containers attached to the tubes as the ‘connecting
force.’” Id.
The Court went on to hold that the specification “teaches three ways to
overcome the connecting force such that the containers detach from the tubes…
(1) pulling the containers away from the tubes[]; (2) shaking the device to
overcome the connecting force holding the containers to the tubes[]; and
(3) allowing the containers to fall off due to gravity[].” Id.
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SUMMARY OF THE ARGUMENT
Telebrands fails to meet the high standard required to show the district court
abused its discretion in granting the preliminary injunctions. Contrary to
Telebrands’ scattershot approach, the district court carefully considered the
likelihood of success on the merits and correctly found independently and
separately that both the ’282 and ’749 Patents were likely valid and infringed. The
district court also carefully considered the irreparable harm factors and found that
Telebrands’ Battle Balloons product continues to irreparably harm Tinnus.
Telebrands’ attempts to circumvent these findings by wrongly arguing that the
district court improperly ignored or rejected its positions. But that is simply not
true. None of Telebrands’ convoluted mischaracterizations of the record below
transform the district court’s decision into an abuse of discretion.
I. The District Court Did Not Err in Finding a Likelihood of Success on
the Merits
All that is required to show a likelihood of success on the merits is “that [the
patentee] will likely prove infringement of one or more claims of the Patents-in-
Suit, and that at least one of those same allegedly infringed claims will also likely
withstand the validity challenges presented by the accused infringer.” AstraZeneca
LP v. Apotex, Inc., 633 F.3d 1042, 1050 (Fed. Cir. 2010). Here, the Court’s task is
simplified because it need only find likelihood of success with respect to at least
the ’282 Patent or the’749 Patent. With respect to the ’282 Patent, Telebrands
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24
concedes infringement by not challenging the district court’s infringement
findings. Accordingly, Telebrands cannot demonstrate any abuse of discretion for
the likelihood of infringement of the ’282 Patent. This only leaves validity of the
’282 Patent. To the extent this Court finds that the district court did not clearly err
in finding no substantial question of validity for the ’282 Patent, the Court does not
need to consider Telebrands’ arguments with respect to the ’749 Patent.
Likelihood of success would be established solely on the ’282 Patent alone.
With respect to validity in the broader context, the district court properly
found no substantial question of validity for the ’282 and ’749 Patents. As this
Court found in the Tinnus I Appeal, the district court did not plainly err in rejecting
the combination of Cooper, Saggio, and Lee under 35 U.S.C. § 103. 846 F.3d at
1207. Telebrands has not shown that the district court below clearly erred in
rejecting those same references for the Patents-in-Suit here. Moreover, the district
court did not abuse its discretion by rejecting the newly asserted Weir and
Donaldson references as neither of them teach detachment by partially filling,
shaking, or both as required by the claims. Appx15, adopted Appx36. The district
court also properly found that Telebrands failed to adequately show that any of the
asserted references inherently teach these limitations. Appx36-37.
To the extent the Court reaches the question of infringement for the ’749
Patent, Telebrands fails to show that the district court clearly erred in finding the
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’749 Patent likely infringed. Telebrands’ primary infringement argument is that
the district court misconstrued the terms “common face” and “second end” because
the constructions did not include planarity or linear limitations, respectively. But
Telebrands’ arguments are based on mischaracterizations of the prosecution history
and artificial inconsistencies regarding the district court’s application of these
terms with the prior art. As is shown below, the district court has been forced to
continuously explain its constructions of “common face” and “second end” to stay
ahead of Telebrands’ ever-changing interpretations of those explanations. And, as
the district court has recognized over and over again, Telebrands has created these
inconsistencies by incorrectly interpreting the court’s reasoning. The district
court’s refusal to import Telebrands’ unsupported planarity and linear limitations
fails to demonstrate an abuse of discretion.
II. The District Court Did Not Err in Finding Irreparable Harm
Telebrands also fails to show that the district court clearly erred in finding
irreparable harm. Telebrands complains of “scant” evidence but ignores that the
district court based its decision on the “ample evidence” showing harm, including
the fact that Tinnus and Telebands are direct competitors, evidence showing the
likelihood of continuing price erosion, and evidence of customer confusion. The
district court properly weighed the evidence and found irreparable harm.
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Accordingly, Tinnus requests that the Court affirm the district court’s
preliminary injunctions against Telebrands.
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ARGUMENT
I. Legal Standard
“A decision to grant or deny a preliminary injunction is within the sound
discretion of the district court, based upon its assessment of four factors: (1) the
likelihood of the patentee’s success on the merits; (2) irreparable harm if the
injunction is not granted; (3) the balance of hardships between the parties; and
(4) the public interest.” Procter & Gamble Co. v. Kraft Foods Glob., Inc., 549
F.3d 842, 847 (Fed. Cir. 2008) (quoting Oakley, Inc. v. Sunglass Hut Int’l, 316
F.3d 1331, 1338-39 (Fed. Cir. 2003)). All that is required to show a likelihood of
success on the merits is “that [the patentee] will likely prove infringement of one
or more claims of the Patents-in-Suit, and that at least one of those same allegedly
infringed claims will also likely withstand the validity challenges presented by the
accused infringer.” AstraZeneca, 633 F.3d at 1050. An accused infringer must
demonstrate a substantial question of validity or infringement to overcome a
showing of likelihood of success on the merits. Trebro Mfg., Inc. v. Firefly Equip.,
LLC, 748 F.3d 1159, 1165 (Fed. Cir. 2014) (citing Aria Diagnostics, Inc. v.
Sequenom, Inc., 726 F.3d 1296, 1304 (Fed. Cir. 2013)).
Under both Fifth Circuit and Federal Circuit law, a district court’s decision
to grant a preliminary injunction can only be overturned upon a showing that court
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abused its discretion.13 See Sepulvado v. Jindal, 729 F.3d 413, 417 (5th Cir. 2013);
see also Procter & Gamble, 549 F.3d at 845. Establishing an abuse of discretion
in the preliminary injunction context requires a “showing that the court made a
clear error of judgment in weighing relevant factors or exercised its discretion
based upon an error of law or clearly erroneous factual findings.” Abbott Labs. v.
Andrx Pharms., Inc., 452 F.3d 1331, 1335 (Fed. Cir. 2006) (quoting Polymer
Techs., Inc. v. Bridwell, 103 F.3d 970, 973 (Fed. Cir. 1996)).
II. The District Court Correctly Found a Likelihood of Success on the
Merits for the ’282 Patent
A. The District Court’s Finding of Likelihood of Infringement of the
’282 Patent is Unchallenged
Telebrands does not challenge the district court’s finding that claim 1 of the
’282 Patent is likely infringed. Blue Brief at 40-58 (limiting non-infringement
arguments on appeal to the ’749 Patent). Thus, all that is required to affirm the
preliminary injunction below is determining that the district court did not err in
finding the ’282 Patent likely valid. See AstraZeneca, 633 F.3d at 1050 (finding
that for preliminary injunction likelihood of success analysis patentee is only
required to prove that one claim of one patent is likely valid and infringed).
13 In the Tinnus I Appeal, this Court properly applied the plain error standard with
respect to obviousness and indefiniteness because Telebrands did not object to the
Magistrate Judge’s determinations on these issues. 846 F.3d 1203, 1205-07.
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B. The District Court Did Not Err in Finding No Substantial
Question of Validity for the ’282 Patent
“A patent shall be presumed valid.” 35 U.S.C. § 282; see also Research
Corp. Technologies v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010) (“A
patent is presumed valid and the party asserting invalidity has the burden of
persuasion to show the contrary by clear and convincing evidence.”). In granting
the preliminary injunction, the district court found that Telebrands failed to
overcome this presumption and raise a substantial question as to validity for the
’282 Patent. In doing so, the district court properly rejected Telebrands’
obviousness arguments as discussed below.
1. The district court correctly found that Telebrands failed to
raise a substantial question as to obviousness for the ’282
Patent
The district court found that the combination of Weir and Donaldson does
not raise a substantial question as to obviousness.14 Appx15. Claim 1 of the ’282
Patent requires, in part, an “elastic fastener being sufficiently limited to permit its
respective container to detach from its respective tube upon one or more of (1) at
14 Telebrands does not mention the fact that the majority of prior art asserted in this
case (including Donaldson) was considered by the Examiner during prosecution. It
is well-settled that an alleged infringer cannot just rehash the prosecution history of
a patent. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir.
2008) (“When no prior art other than that which was considered by the USPTO
examiner is relied on by the attacker, he has the added burden of overcoming the
deference that is due to a qualified government agency presumed to have properly
done its job”).
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least partially filling the container with fluid and (2) shaking the housing.”
Appx111, col. 6:47-51 (hereinafter “the Sufficiently Limited limitation”).
Although Telebrands claimed that these two references together teach all of the
elements of claim 1, the district court rejected them because neither Weir nor
Donaldson “teaches a method for filling a container with fluid and corresponding
detachment thereof by partially filling or shaking.” Appx15. Specifically, the
Magistrate Judge emphasized the mechanical action and release of Donaldson:
[T]he sealing disclosure in Donaldson discloses a mechanical release
that includes a firing pin and pressurized gas:
([Donaldson], Fig. 5; 4:43–52 (“The pressurized gas escapes into the
volume 48 and fills that volume. The spring 66 moves the spring pin
back into the cocked position with the gasket 70 seated against the
inner container bottom adjacent to the hole in that bottom to seal the
volume except for the orifices 46. The pressurized gas fills the volume
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48 and moves through the orifices 46 into the balloon as indicated in
FIG. 4 by the arrows 71’. The O-ring seals the balloon against the
escape of this pressurized gas so the balloon inflates…”).) Not only is
it unclear how it would be obvious to use such a mechanism to
release a plurality of containers filled with water by partially filling
and/or shaking, it appears actually counterintuitive to such a teaching.
Instead, the mechanical action for release disclosed in Donaldson is
actually distinguishable from the present invention, as Donaldson
does not teach removing the container by partially filling or shaking.
Appx15-16 (figure in original; emphasis added). In adopting the Magistrate
Judge’s reasoning, the District Judge also rejected Telebrands’ claim that the O-
rings in Donaldson are inherently capable of performing the recited function
because the Sufficiently Limited limitation “is not necessarily present or the
natural result of combining the prior art references, as the O-rings that Telebrands
relies on are frequently designed specifically not to detach upon shaking.”
Appx37. Telebrands now wrongly claims these findings were clearly erroneous.
a. The district court did not misinterpret “fluid”
Telebrands first claims that the district court improperly distinguished
Donaldson and Weir based on a supposedly erroneous construction of “fluid.”
Blue Brief at 26-28. In support, Telebrands cites certain excerpts from the
Magistrate Judge’s R&R out of context where the word “water” was used instead
of “fluid” to conclude that the court dismissed Donaldson and Weir as irrelevant.
Id. at 27. Telebrands misunderstands the Magistrate Judge’s analysis and
overemphasizes the court’s use of the word “water.” The Magistrate Judge
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carefully evaluated the references and found that “neither Weir nor Donaldson
teaches a method for filling a container with fluid and corresponding detachment
thereof by partially filling or shaking.” Appx15. The district court adopted the
Magistrate Judge’s reasoning on this distinction, which does not hinge on the type
of fluid that was disclosed. Appx36.
While the Magistrate Judge did discuss the fact that neither Weir nor
Donaldson discloses filling containers with water, this was not the sole, or even
primary, reason that was articulated for distinguishing these references. For
example, in distinguishing Donaldson, the Magistrate Judge found that “the
mechanical action for release disclosed in Donaldson is actually distinguishable
from the present invention, as Donaldson does not teach removing the
container by partially filling or shaking.” Appx16 (emphasis added). The court
did not make this same distinction when discussing what fluid was used.
Contrary to Telebrands’ claim that lack of water was the court’s reason for
distinguishing Donaldson, it was the “mechanical action for release” (discussed
above) that guided the Magistrate Judge’s conclusion. Nowhere in the R&R does
the Magistrate Judge suggest these references were dismissed as irrelevant.
Indeed, in denying Telebrands’ motion for reconsideration, the district court
confirmed that “the Court did not reject any references as irrelevant. Rather, the
Court considered the references and the testimony provided, and analyzed each
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reference and combination, as well as any evidence of a motivation to combine.”
Appx6863.
Telebrands’ misreading fails to demonstrate that the district court’s
reasoning was “clearly erroneous.”
b. The district court did not misapply the Sufficiently
Limited limitation
Telebrands next argues that the district court erred in “analyzing” the
Sufficiently Limited limitation. Blue Brief at 28-39. In support, Telebrands raises
what it portrays as a series of purported errors in the district court’s analysis. But
Telebrands’ underlying complaint is the same—Telebrands contends that the
district court should have found that the O-rings in the prior art (Donaldson and
Lee), by themselves, sufficiently disclose detachment by partially filling or
shaking.
Telebrands initially claims that the district court “barely” mentioned
motivation to combine. Blue Brief at 28. According to Telebrands, this constitutes
an abuse of discretion. Id. Telebrands’ reasoning is faulty. First, the degree to
which the district court addressed Telebrands’ arguments is no basis for finding
error. Second, as admitted by Telebrands, the district court did in fact sufficiently
address motivation to combine. Regarding Donaldson, the Magistrate Judge found
that “[n]ot only is it unclear how it would be obvious to use such a mechanism to
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release a plurality of containers filled with water by partially filling and/or shaking,
it appears actually counterintuitive to such a teaching.”15 Appx16.
Moreover, the district court did not necessarily need to reach the question of
motivation as the court found that neither Donaldson nor Weir disclosed
detachment by partially filling or shaking. Appx15. Telebrands does not explain
why the district court was required to reach the issue of motivation where neither
of the references disclosed the actual elements of the claim. No one disputes that
Donaldson discloses an O-ring. But Telebrands’ attempt to transform that simple
disclosure into substantial proof that Donaldson teaches detachment by partially
filling or shaking was properly rejected by the court.
Attempting to get around this critical deficiency, Telebrands next argues that
the district court erroneously interpreted the word “permit” in the phrase “the
restriction of the elastic fastener being sufficiently limited to permit its perspective
container to detach from its respective tube upon one or more of (1) at least
partially filling the container with fluid and (2) shaking the housing . . .” Blue Brief
at 31-33; Appx111. By arguing that the plain meaning of “permit” means “allow,”
Telebrands attempts to circumvent the actual language of the claim that
15 With respect to Lee and Saggio (for the ’749 Patent), the Magistrate Judge also
found that “Telebrands does not sufficiently describe how a person of ordinary
skill in the art would have been motivated to combine Lee with Cooper, which
relates to lawn and garden sprinklers, or Saggio, which relates to a water balloon
system.” Appx23.
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detachment occurs upon partially filling or shaking. Instead, Telebrands’ proposed
construction unnecessarily broadens the claim to include any method of
detachment (i.e., mechanical actuation, gravity, pulling, etc.). The district court
properly rejected this argument as the plain language of the claims expressly
requires detachment upon partially filling, shaking, or both. Appx36. By defining
“permit” to allow different forces to cause detachment, the partially filling and
shaking requirements would be rendered meaningless.
Telebrands’ claim that its overly broad interpretation of “permit” is
supported by the intrinsic evidence is unfounded. The ’282 Patent’s specification
discloses “pulling” as an alternative embodiment, not a preferred embodiment. It
is a third alternative, listed only after the claimed embodiments of detaching upon
partially filling or shaking. Appx110 at 4:65-66 (“They can be removed by falling
off, by shaking them off, by pulling them off by hand, etc.”). A construction or
interpretation that excludes an embodiment is not suspect just because it excludes
an alternative embodiment. TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc.,
529 F.3d 1364, 1373 (Fed. Cir. 2008) (“[C]laims need not be construed to
encompass all disclosed embodiments when the claim language is clearly limited
to one or more embodiments.”).
Telebrands has misconstrued the Magistrate Judge’s analysis by conflating
the term “permit” in the “sufficiently limited to permit” limitation with whether
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some other force (e.g., someone manually pulling containers from their respective
tubes) causes detachment. During claim construction, Telebrands again argued for
this open-ended interpretation of “permit,” and the court explained that “[t]he term
‘sufficiently limited,’ as used in the claim, is a limitation of the elastic fastener,”
and that “[t]he term ‘permit’ is not used to imply some other force might be used to
detach the containers, but rather it is used to define the restrictive force of the
elastic fasteners as stated in the claim.” Appx7112, adopted in full at Appx6837.
The court repeatedly stated that the term “sufficiently limited,” as used in the
claim, “is a limitation of the elastic fastener” and not about the use of “some other
force.” Id.
Telebrands argues in the alternative that even if “permit” were interpreted
under the district court’s analysis—i.e, within the actual context of the claims—
Donaldson purportedly discloses that limitation because it teaches detachment after
filling. Blue Brief at 33. But Telebrands is again interpreting the claim out of
context because under this reading of the claim, the term “upon” would be read out
of the claim entirely. The district court correctly found that the mechanical action
for release disclosed in Donaldson fails to “teach detachment upon partially filling,
shaking or both as the claims here require.” Appx36 (emphasis added). Moreover,
Telebrands does not even argue that the court clearly erred in distinguishing the
mechanical action for release in Donaldson over the present invention. Thus, the
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district court did not clearly err in rejecting Telebrands’ improper broadening of
the term “permit.”
c. The district court did not err in finding no inherency
Recognizing the deficiencies in the prior art, Telebrands is left making
unsupported conclusions regarding inherency. This Court has been clear regarding
the high standard for asserting inherency in an obviousness context: “We have
recognized that inherency may supply a missing claim limitation in an obviousness
analysis . . . . We have, however, also explained that the use of inherency, a
doctrine originally rooted in anticipation, must be carefully circumscribed in the
context of obviousness.” Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186,
1195 (Fed. Cir. 2014) (citations omitted). Thus, inherency requires that the
claimed element necessarily be present or naturally result in the prior-art
reference. Id. “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d
629, 639 (Fed. Cir. 2011). Telebrands fails to demonstrate that the district court
clearly erred in finding that Donaldson does not inherently disclose the Sufficiently
Limited limitation.
Telebrands first incorrectly claims that the district court ignored evidence
showing the inherent capabilities of the prior art O-rings. Blue Brief at 34. In
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actuality, the district court made clear that Telebrands “has not met the high
standard required for inherency” because the limitation that “the connecting force
of the fastener be ‘sufficiently limited to permit’ the container to detach upon
partially filling, shaking or both – is not necessarily present or the natural result of
combining the prior art references, as the O-ring that Telebrands relies on are
frequently designed specifically not to detach upon shaking.” Appx37. The fact
that the district court did not agree with Telebrands’ opinions about O-rings in no
way demonstrates clear error.
Telebrands also alleges that its “unrebutted” evidence proves that the
disclosed O-rings are necessarily capable of detachment by shaking. Blue Brief at
34-35. This is demonstrably false as Tinnus’ expert expressly testified that shaking
is not inherent in the prior art. Appx3062, ¶¶59-60. Moreover, the evidence cited
to by Telebrands—consisting solely of opinion testimony of its own expert—is
lacking any underlying factual support showing that the Sufficiently Limited
Limitation must necessarily be present in the prior art. Telebrands assumes,
incorrectly, that because the district court did not cite its expert in its opinion, it
must not have considered the testimony. This is not a sufficient basis for showing
abuse of discretion.
Without any direct support in the prior art for its inherency theory,
Telebrands takes a step back and attempts to divorce the O-rings from the context
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in which they exist in the prior art. By doing this, Telebrands can argue that so
long as some force is somehow applied, and an O-ring is somehow released, then
inherency is proven. Thus, according to Telebrands, the mechanism Donaldson
uses to detach the balloon becomes irrelevant.16 Blue Brief at 36. In addition to
there being no actual support for Telebrands’ position, its theory completely
ignores the context of the claim, which expressly requires that detachment occur
upon partially filling or shaking. Merely describing what an O-ring may or may
not be capable of is insufficient within the context of the claims, which require
more. Simply put, Donaldson does not meet the plain language of the Sufficiently
Limited Limitation because detachment occurs upon mechanical actuation, not
partially filling or shaking.
Telebrands also argues that Donaldson “unambiguously discloses an O-ring
that is capable of detaching when a tube upon which it is attached accelerates
away . . .” Blue Brief at 37. Telebrands’ play on words is another example of how
it consistently misinterprets the district court’s constructions to obtain a favorable
result. “Accelerating away” does not equate to shaking as contemplated by the
claims or the court’s construction of the term. Moreover, the district court
evaluated the alleged admissions by Tinnus’ technical expert (Blue Brief at 36
16 Telebrands’ sleight-of-hand description of the Donaldson firing mechanism is
misleading. Telebrands refers to the mechanism to fill the balloon as irrelevant.
Blue Brief at 34. But it is the same mechanism that ultimately provides the
mechanical actuation and force to detach the balloon.
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n.10) on reconsideration and found that “even if this testimony provided the
admissions claimed by Telebrands, which it does not appear to, the purported
admissions of Plaintiffs’ technical expert do not impact the Court’s analysis.”
Appx6858.
Finally, there is nothing inherent in O-rings, particularly the O-rings in
Donaldson, that requires detachment by shaking. And one can imagine many cases
where an O-ring would be designed not to detach upon shaking. As the district
court found, it would be “counterintuitive” to have the O-rings in Donaldson
naturally result in detachment by shaking as that would defeat the purpose of
keeping the O-ring secured until the mechanical actuation of the Donaldson’s
device performs the detachment. Appx16.
Telebrands’ unsupported statements that the prior art O-rings “would have
detached upon shaking” fails to satisfy the high standard for inherency, and the
district could did not clearly err in reaching this conclusion.
2. The District Court Did Not Err in Considering the
Objective Indicia Including Copying
“It is the secondary considerations that are often most probative and
determinative of the ultimate conclusion of obviousness or nonobviousness. Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir.
1996). The district court found that this evidence, in particular the direct evidence
of Telebrands’ copying, was relevant. Appx23 (citing Appx200). Telebrands does
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not dispute that it copied Tinnus’ product, but rather downplays the importance of
copying in the obviousness context. Blue Brief at 36-37. Aside from its general
objections, Telebrands offers no real support for its suggestion that copying is
somehow less important or does not matter here.
It is well-settled that “evidence of copying tends to show nonobviousness.”
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1336 (Fed. Cir. 2016). The fact that
copying occurred is unquestionably relevant. This is particularly true where the
copying was done by Telebrands, a direct competitor. See id. (“The fact that a
competitor copied technology suggests it would not have been obvious.”).
Telebrands’ attempt to undermine the district court’s reliance on copying by
pointing to its redesigned Battle Balloons product misses the point. The
undisputed fact is that Tinnus’ invention was copied by Telebrands, which “tends
to show nonobviousness.” Id. Simply because the district court found that
Telebrands’ redesigned product had some differences from its original product is
of no consequence.17 Copying occurred, and that should be the end of the inquiry.
17 In the Tinnus I action, after Telebrands released its redesigned Battle Balloons
product, Tinnus moved for contempt to determine whether the redesigned product
was being sold in violation of the existing injunction. (Tinnus I, Dkt. 113). Under
the heightened standard for contempt, the district court denied Tinnus’ motion
finding that the modified housings in Telebrands’ two products were more than
colorably different. (Tinnus I, Dkt. 144). Although not entirely clear, Telebrands
appears to rely on this finding to suggest that anything that occurred before its
redesign is irrelevant to any of the issues in this proceeding. It is not clear how the
district court’s finding during contempt proceedings is relevant as the court still
found that the redesigned product likely infringes.
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Accordingly, the district court correctly relied on Tinnus’ evidence of
objective indicia to support its findings.
3. This Court Can Consider Other Objective Indicia that
Were Before the District Court
Telebrands argues on appeal that evidence of copying alone cannot be
sufficient when considering objective indicia. Blue Brief at 39-40. But during the
preliminary injunction proceedings, Tinnus presented overwhelming evidence of
other objective indicia including commercial success, praise by others, long felt
need, failure by others, and licensing. See Statement of the Case, Section I.G.,
supra. In affirming the preliminary injunction below, this Court can rely on these
other objective criteria because “[a]s a general proposition, an appellate court may
affirm a judgment of a district court on any ground the law and the record will
support so long as that ground would not expand the relief granted.” Glaxo Grp.
Ltd. v. Torpharm, Inc., 153 F.3d 1366, 1371 (Fed. Cir. 1998).
For instance, with respect to commercial success, Tinnus presented evidence
that both ZURU and Telebrands independently went on to achieve success with
their respective multiple balloon filling products. Appx2851-2857, ¶¶18-27; see
discussion at 16-17, supra. Appx3420 at 33:7-15.
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Telebrands does not contest on appeal that the district court's finding of a
nexus was appropriate. See Blue Brief at 39-40. In any event, nexus is presumed
since Bunch O Balloons, the marketed product, is coextensive with claim 1 of the
’749 patent and claims 1-3 of the ’282 patent. Appx3035, ¶103 (Tinnus’ expert’s
opinion); Brown Williamson Tobacco v. Philip Morris, 229 F.3d 1120, 1129 (Fed.
Cir. 2000) (a nexus is presumed when the marketed product embodies the claimed
features).
Bunch O Balloons has also won numerous industry accolades. Appx2850-
2851. For example, in January 2016, Bunch O balloons won the 2016 Toy Award
for the “SchoolKids” category at Spielwarenmesse, a global toy fair hosted in
Nuremberg, Germany. Appx2850-2851, ¶16. The Spielwarenmesse is the world’s
leading fair for the toy industry with over 2,800 exhibitors from 60+ nations and
more than 70,000 trade visitors from 120 nations. Id. The toys are judged based on
their enjoyment, originality, safety, workmanship & quality, understandability and
potential for trade success. Id. The jury was sufficiently impressed with Bunch O
Balloons to declare it a superb product. Id.
Bunch O Balloons was also awarded the overall “Toy of the Year”
distinction in addition to winning the Outdoor category, at the 2015 Australian Toy
Association Product of the Year Awards in Melbourne. Appx2851, ¶17. In just
three months, the product was the best-selling summer toy in Australia. Id.
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In addition to presenting evidence of praise by others and a long-felt need,
Tinnus also presented evidence of failure by others. Appx2983-2984. For example,
Dr. Kudrowitz noted that the prior art Donaldson reference would not operate as
described to automatically and detach and seal an air-filled balloon—and that
Donaldson would not work with a non-compressible fluid like water. Appx2983-
2984, ¶110. As another example, Dr. Kudrowitz noted that the Saggio prior art
application represented a failed attempt to solve the water balloon problem, as that
application was rejected for non-enablement.18 Appx2984, ¶111. Indeed, Dr.
Kudrowitz testified that “[f]rom my own experience in the toy industry, I am aware
that the problem of filling multiple balloons simultaneously and automatically
sealing them has been a daunting one.” Appx2983, ¶109.
Tinnus also presented evidence with respect to the chronology of the
prior art. Appx2984, ¶112. Specifically, Dr. Kudrowitz observed “[t]hat the various
prior art references Telebrands has cited are spread over several decades is, to me,
also telling: Donaldson dates to 1990; Cooper, to 1997; Weir, to 1999; Lee, to
2004;
18 The 2012 Saggio application disclosed in the specification that “[t]he time and
energy required to tie multiple water balloons is often significant and often
interferes with producing a large number of filled water balloons. Thus, there is a
need for a water balloon that does not require tying and a system/method of
providing a plurality of water balloons relatively quickly.” Appx3164 at [0003-
0004] (emphasis added).
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Saggio, to 2012; and Air Force 4 Inflator, to 2013.” Id. Dr. Kudrowitz opined that
this “evidences the failure of others to solve the problems solved by the invention
described and claimed in the ’749 and ’282 Patents and embodied in Tinnus’
Bunch O Balloons product.” Id.; accord Leo Pharm. Prods. v. Rea, 726 F.3d 1346,
1356 (Fed. Cir. 2013) (“The elapsed time between the prior art and the [patent in
suit’s] filing date evinces that the [patent in suit’s] claimed invention was not
obvious to try.”).
Further, Dr. Kudrowitz testified at the hearing as to why he believed the
patents to be non-obvious, including that Telebrands had failed to show each and
every claim limitation in the prior art. Appx4464-4466 at 29:15-31:12. Also at the
hearing, Dr. Perryman testified that Bunch O Balloons was a successful product.
Appx4388 at 36:18- 37:20. In short, Tinnus presented substantial evidence in
support of non-obviousness and this Court can rely on that evidence on appeal.
See Glaxo, 153 F.3d at 1371.
III. The District Court Correctly Found a Likelihood of Success on the
Merits for the ’749 Patent
The district court found that Telebrands’ Battle Balloons product likely
infringes both the ’282 and ’749 Patents. Appx7-14; Appx32-33. Telebrands does
not challenge the district court’s finding of likely infringement for the ’282 Patent.
See Blue Brief at 40-58 (limiting non-infringement arguments to the ’749 Patent).
Accordingly, if the Court finds no substantial question of validity with respect to
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the ’282 Patent, the Court need not reach the question of likelihood of success for
the ’749 Patent. In the event the Court does consider the ’749 Patent, Telebrands
has failed to demonstrate the district court clearly erred in finding the ’749 Patent
likely valid and infringed.
A. The District Court Did Not Err in Finding a Likelihood of
Infringement for the ’749 Patent
For the ’749 Patent, Telebrands’ argument centers on the district court’s
constructions of the terms “common face” and “second end” in claim 1.
Throughout the related district court litigations, Telebrands has repeatedly
attempted to import limitations into these terms: a planarity requirement for
“common face” and a linear limit for “second end.” And as the district court has
repeatedly found, Telebrands’ proposed limitations have no support in the
prosecution history, ignore the plain language of the claim, and rely on numerous
misinterpretations of the district court’s constructions.
1. The district court did not misconstrue “common face”
In Tinnus I, the district court generally adopted Tinnus’s proposed
construction and construed “common face” to mean “a shared outer surface of the
housing through which a plurality of holes extend.”19 Appx2492-2496.
Telebrands correctly notes that the Magistrate Judge expressly rejected Telebrands’
19 Although Tinnus I involves a different patent (the ’066 Patent), the terms
“common face” and “second end” appear in claim 1 of the ’749 Patent as well,
which is a continuation of the ’066 Patent and shares the same specification.
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attempt to limit “common face” as requiring a planar surface. Blue Brief at 41.
The district court applied the same construction for the ’749 Patent in deciding the
preliminary injunction despite Telebrands’ insistence that a “common face” must
be a planar surface with no geometric transitions. Appx12-13.
Telebrands’ primary contention is that the district court’s construction of
“common face” is inconsistent with the prosecution history. This is based on
Telebrands’ mistaken belief that the patentee repeatedly distinguished the Boise
reference (Appx1853) because of the “common face” language. But the patentee
never made any such distinction, and the district court recognized that Telebrands’
argument was based on an incorrect reading of the examiner’s amendment.
During prosecution, the examiner rejected the language “a housing with an
opening at a first end and a plurality of holes at a second end” in view of Boise
reference. Appx1827. Figure 5 of Boise is representative, and is set forth below
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(without highlighting from Telebrands):
Boise, Fig. 5 (Appx1853)
Applicant then amended the claim as follows: “a housing comprising with an
opening at a first end and a two-dimensional array a plurality of holes at a second
end . . . “Appx1900 (amendments emphasized in original). The Examiner then
amended claim 1 as follows: “a housing comprising an opening at a first end, and a
plurality of holes extending through a common face of the housing two
dimensional array of holes at a second end . . .” Appx1924. The only explanation
given by the examiner for the amendment was that “[t]he ‘common face’ language
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of claim 1 distinguishes the present invention from Boise . . .” Appx1925.
Notably, the Examiner made no other comment regarding the previous amendment
adding “a two-dimensional array.” See Appx1925-1926.
Based only on these amendments and the examiner’s limited explanation,
Telebrands makes a number of assumptions to support its planarity limitation.
First Telebrands’ incorrectly assumes that the addition of “two-dimensional array”
was rejected only because Boise allegedly “also has holes that are arranged in a
two-dimensional array.” Blue Brief at 44. But in striking “two-dimensional array”
and adding the “common face” language, the examiner made no mention of the
“two-dimensional array” language and whether that language was the sole reason
for adding “common face.” Telebrands also incorrectly assumes that the “common
face” language was the only limitation added to the claims to overcome Boise. A
number of additional limitations were added to the claim in response to the
rejection over Boise. Appx1899-1911. This Court has cautioned against using the
file history to limit claim scope without express disclaimer. Elbex Video, Ltd. v.
Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (prosecution
history disclaimer does not apply “where the alleged disavowal is ambiguous”).
Despite these unsupported interpretations of the prosecution history, the
district court correctly ruled that “common face” has no planarity requirement.
Tinnus I, Dkt. 181 at 6-10. As the district court observed, the Examiner “did not
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50
necessarily amend the claims to distinguish the present invention over the prior art
by requiring that the ‘common face’ be ‘planar’ (indeed the Examiner states no
such requirement in amending the plain language of the claim) because the
important distinction is also made that a plurality of holes extend through a
‘common’ or shared surface of the housing at a second end.” Id. at 8-9.
Telebrands’ nevertheless maintains that the district court was wrong because
“if the patentee had amended the . . . claims to say ‘shared outer surface’ instead if
‘common face,’ the examiner unquestionably would have maintained its initial
rejection of Boise.” Blue Brief at 47. Not only is it improper for Telebrands to
speculate as to what the examiner would have done, Telebrands incorrectly
assumes that the examiner did not take into account the full-scope of the claim,
including the “second end” limitation, when amending claim 1 to overcome Boise.
The district court recognized that the examiner’s amendment adding “common
face” was not made in a vacuum and explained that Telebrands’ argument “fails to
appreciate the plain language of claim 1 and the scope and context of the
Examiner’s statements” and that “Boise does not disclose a shared outer surface
with a plurality of holes at a second end.” Tinnus I, Dkt. 181 at 9 (emphasis in
original). The district court correctly recognized and rejected Telebrands’ overly-
narrow reading of the prosecution history.
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51
Telebrands also claims that the ’749 Patent’s prosecution history also
supports its claim that common face includes a planarity requirement and surfaces
that are separated by geometric transitions. Blue Brief at 45-46. Specifically,
Telebrands cites the examiner’s consideration of the prior art Saggio as compared
to Furey. But once again Telebrands takes the examiner’s distinction too far. In
rejecting certain claims under 35 U.S.C. § 103, the Examiner merely stated that
Saggio “does not disclose that the tubes extend through a common face of the
housing,” and that Furey does disclose “tubes…extending from a common face of
the housing.” Appx2528-2529. The district court correctly found that the
Examiner’s consideration of these references did not require that the “common
face” be a planar surface that is geometrically bounded.
The district court’s refusal to adopt Telebrands tenuous interpretation of the
prosecution history does not constitute an abuse of discretion. As shown in the
figures reproduced below, the Patents-in-Suit and the Furey reference both show a
device in which the tubes extend in generally the same direction from the same
portion of the housing, in other words: a shared outer surface.
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52
’749 Patent, Fig. 1 (Appx91) Furey, Fig. 1 (Appx2546)
In contrast, Boise and Saggio both show a device in which fluid conduits
extend in diametrically opposed directions from widely disparate portions of the
housing.
Boise,
Fig. 5
(Appx18
53)
Saggio, Fig. 7 (Appx2540)
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53
The distinction is not whether the face is absolutely planar or if it has a step
that is bigger than an atom. In fact, the examiner never discussed the narrowing
conduit in Saggio and certainly did not make any distinction based on Telebrands’
supposed geometric transitions. The distinction is whether the prior art shows the
plurality of tubes extending from a shared outer surface – i.e., a common face. The
conduits of Boise and Saggio, which extend from opposite sides of a cylinder,
cannot be tubes attached to “holes extending through a common face
of the housing at a second end.”
The district court additionally noted that “the ‘planar’ requirement also
potentially excludes embodiments disclosed in the specification where the shape of
the housing is ‘conical, cylindrical, pyramidal, etc…’” (Tinnus I, Dkt. 181 at 9).
But Telebrands claims this was a mistake because conical, cylindrical, and
pyramidal shapes can have planar surfaces. Blue Brief at 48. Telebrands again
incorrectly assumes that any conical, cylindrical, or pyramidal shaped object must
have a planar face. Such a limitation has no support in the intrinsic evidence.
Simply because a certain shape may have a planar face does not mean it must have
a planar face. Telebrands is again trying to improperly read limitations into the
claim.
Moreover, Telebrands misconstrues the specification, which does not say
“cone” or “pyramid.” Rather, the specification says “conical” or “pyramidal”—
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54
i.e., the housing can resemble a conical or pyramidal shape but does not have to be
a cone or pyramid per se. Appx99, col. 6:17-24. In fact, the specification
specifically sets forth that “the shapes shown and illustrated . . . are for example
purposes only. Various other shapes may be used herein . . .” Id. Accordingly, the
district court did not err and correctly relied on the specification in rejecting any
planarity requirement. (Tinnus I, Dkt. 181 at 9).
2. The district court did not err in finding that Battle Balloons
likely infringes
Telebrands next argues that under the district court’s construction of
“common face,” “Battle Balloons does not have a ‘plurality of holes’ in a
‘common face’ . . . because each step of the Battle Balloons housing is a discrete
surface with only a single hole.” Blue Brief at 48. Telebrands’ argument largely
relies on its misplaced planarity and geometric boundary limitations. Indeed,
Telebrands even admits that “geometric boundaries” are not included in the district
court’s construction of common face: “a shared outer surface.” Blue Brief at 49.
Telebrands spiral staircase analogy is misplaced because claim 1 requires “a
housing comprising … a common face.” (emphasis added). There is no housing
with respect to Telebrands’ spiral staircase, and so it is not at all analogous to the
Battle Balloons housing. Telebrands’ argument ignores the full scope and context
of the claim as applied under the district court’s construction of “common face.”
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55
Telebrands attempts to create a false dichotomy that either “common face”
must be rigidly geometrically limited to a planar surface or no surface with
geometric boundaries can be a “common face” with a “plurality of holes.” Blue
Brief at 50-51. Contrary to Telebrands contention, the district court did not err in
rejecting this overly rigid interpretation. Rather, the district court correctly found
that “[t]here is nothing in the prosecution history, the specification, or the claims
that requires such a narrow ‘geometrically bounded’ interpretation of what it
means to be a ‘shared outer surface.’” Appx13; Appx34. When arguing this same
position in its motion for reconsideration, the district court again found that
“‘nothing in the construction or the prosecution history of this claim demands this
dichotomy.’” Appx6862 (quoting Appx34).20
Accordingly, Telebrands has failed to identify any abuse of discretion by the
district court in refusing to limit “common face” to be a planar surface with distinct
geometric boundaries. And, the district court correctly found that the Battle
Balloons housing has a “shared outer surface of the housing through which a
plurality of holes extend.”
20 The district court also rejected Telebrands’ claim that it failed to specifically
identify where the “common face” is located, confirming that the Court “carefully
considered” Telebrands’ arguments in light of the prosecution history and found
them unpersuasive. Appx6861-6862.
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3. The district court consistently applied “second end”
Telebrands next argues that the district court inconsistently applied the
“second end” limitation depending on whether it was looking at prior art or the
accused Battle Balloons product. Blue Brief at 51-52. Telebrands incorrectly
interprets the district court’s construction of “second end” and its application of
that construction to the prior art.
In Tinnus I, the district court construed the term “second end” to mean “an
outer limit of the housing distinct from the first end.” (Tinnus I, Doc. No. 181, at
13). In construing the term, the district court rejected the requirement that the
“second end” be a linear limit or adjacent to a linear limit of the housing. (Id. at
12). Despite the district court’s express rejection of limit being a linear limit,
during the preliminary injunction proceedings in this case, Telebrands nevertheless
interpreted the district court’s construction of “outer limit” to be the outer linear
limit. Appx1683-1684. The district court again rejected Telebrands’ “unduly
narrow interpretation of the Court’s claim construction,” but because of an
apparent dispute between the experts as to the meaning of the construction, the
district court clarified “outer limit” to be “simply that of an ‘outer surface.’”
Appx13-14. The district court also made perfectly clear that “[t]he distinguishing
marker of the ‘second end,’ as was set forth in the Court’s claim construction, is
Case: 17-1175 Document: 73 Page: 69 Filed: 08/10/2017
57
that the ‘second end’ be distinct from the ‘first end.’” Appx14 (emphasis in
original).
Telebrands then objected, as it does here, that the court’s clarification
actually broadened the term to include surfaces adjacent to a limit of a housing.
Appx4667-4668. Telebrands claims this is inconsistent with the district court’s
previous rejection that the “second end” be “adjacent to” a linear limit of the
housing. The district court disagreed, and acknowledged that Telebrands created
this perceived inconsistency to argue its linear limit construction another time:
“Telebrands claims that it is not again arguing for this limitation, but then states
that anything that is not the outer linear limit is an ‘adjacent surface.’ By labeling
everything that is not the outer linear limit an ‘adjacent surface,’ Telebrands is
again arguing that the term should be limited to only the outer linear limit . . .”
Appx33-34.
Telebrands made these same arguments during claim construction, and the
district court again rejected them, but this time the court explained that it only
clarified “outer limit” because “[Telebrands’] expert continued to advocate a
position that circumvented the Court’s construction based on the meaning of ‘limit’
. . . .” Appx7177. The district court found that:
While the Court used the term “outer limit” in its construction, it was
to resolve the parties’ initial dispute as to whether the “second end”
needed to be a linear limit. The Court only clarified the meaning of
that term using the term “surface” to resolve the dispute between
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58
testifying experts at the preliminary injunction hearing. In reality, the
language of the patent is clear in that it requires both a “first end” and
a “second end” and they must be distinct. The Court has stated this
from the outset. The outer limit is simply synonymous with an “end”
of the housing as a person of ordinary skill in the art would
understand the plain and ordinary meaning of that word. The “second
end” must be an end of the housing. There is no support in the
intrinsic record that “second end” must be “one of at least two
lengthwise limits.”
Appx7178. As with “common face,” Telebrands’ strategy has been to isolate
claim terms and then apply a hyper-technical construction, ignoring the context of
these terms within the claims, prior art, and understanding of a person of ordinary
skill. The district court has recognized this flawed approach to claim construction,
which is why it repeatedly distinguished the first and second ends as being distinct.
Telebrands simply refuses to apply the claim terms in context.
Telebrands’ discussion of Boise further illustrates its flawed approach to
claim construction. Contrary to Telebrands’ claim, the district court never
identified “only Boise’s linear extremes” as the “second end.” Blue Brief at 52
(emphasis added). The district court’s discussion of Boise was not so limiting.
First, the district court’s statement on Boise was for “common face,” not “second
end.” And for “common face,” the district court found that Boise shows “an
aligned plurality of holes along the cylindrical portion of the housing, and a single
hole at either end of the housing.” Appx2494 (emphasis added). For “second end,”
the district court correctly found that “Boise does not disclose a shared outer
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59
surface with a plurality of holes at a second end.” Appx2495 (emphasis in
original). Telebrands’ incomplete characterization of the district court’s discussion
of Boise in no way supports its linear limit construction.
Refusing to back down from its flawed interpretations, Telebrands argues
that the clarified construction of “outer limit” is “irreconcilable with its application
of the term to Boise.” Blue Brief at 56. But as the district court explained, “[t]he
claim must be read in its full context to appreciate the amendment made by the
Examiner in view of Boise.” Appx13. Telebrands creates another false
dichotomy—i.e. if “second end” does not mean the absolute linear limit, it must
mean the “entire surface that is not the ‘first end.’” Appx4668. This dichotomy is
unsupported by the claims, the specification, the court’s construction of the term,
or the court’s analysis. The district court carefully evaluated the prosecution
history and found that “Boise does not include a shared outer surface of the
housing through which a plurality of holes extend at ‘an outer limit of the housing
distinct from the first end.’” Appx7117-7118 (emphasis added).
The district court’s interpretation of the term “second end” has been
consistent, and the fact that the court refuses to adopt Telebrands’ strained reading
of the claims, the prosecution history, and the district court’s own explanations is
insufficient to show clear error.
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B. The District Court Did Not Err in Finding No Substantial
Question of Validity for the ’749 Patent
Telebrands’ arguments regarding the validity of the ’749 Patent are mostly
the same as those for the ’282 Patent. The primary difference is that for the ’749
Patent, Telebrands asserted the combinations of (1) Air Force Inflator with
Donaldson and Lee, and (2) Saggio and Cooper with Donaldson or Lee. Similar to
the ’282 Patent, however, Telebrands’ arguments center on whether the district
court properly considered Donaldson and Lee. Because the arguments with respect
to Donaldson are virtually the same as that for Lee, for the same reasons discussed
for Donaldson in Section II B. supra, Telebrands fails to demonstrate that the
district court erred in finding that Donaldson or Lee raise a substantial question as
to validity for the ’749 Patent.
With respect to Lee, the district court also found that Lee relates to a
treatment for obesity and that Telebrands “does not sufficiently describe how a
person of ordinary skill in the art would have been motivated to combine Lee” with
the other references. Appx21-23. In the Tinnus I Appeal, this Court also
considered the applicability of Lee to the ’066 Patent and found that the district
court did not plainly err in finding no motivation to combine. Tinnus I Appeal, 846
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F.3d at 1207 (“Telebrands has not demonstrated that Lee is reasonably pertinent to
the problem addressed in the ’066 patent”).21
With respect to Air Force Inflator, Telebrands does not challenge the district
court’s finding that it “does not disclose any elastic fasteners or any sealing
mechanism for the balloons” and that it fails to “teach detachment of the containers
by partially filling and/or shaking.” Appx20-21. Telebrands only generally claims
that the district court erred in rejecting this reference but does not present any real
challenge other than those already raised with respect to Donaldson and Lee.
Accordingly, no additional discussion of Air Force Inflator is necessary.
IV. The District Court Did Not Err in Finding Irreparable Harm
During the preliminary injunction proceedings, Tinnus submitted substantial
evidence of irreparable harm. See Statement of the Case, Section I.E., supra. The
district court held a hearing and heard testimony regarding, among other things,
price erosion, loss of goodwill, customer confusion, and harm to customer
relationships. Telebrands was afforded the opportunity to rebut Tinnus’ showing
and present evidence of its own. Based on a careful review of all the presented
evidence, the district concluded that Tinnus will likely suffer irreparable harm.
Appx26-27.
21 Although the Court reviewed Lee under a plain error standard, Telebrands has
not shown why the Court’s consideration of Lee should change under a clear error
standard for patents concerning the same subject matter.
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Telebrands creates the misconception that the district court made reversible
errors in evaluating the evidence of price erosion and harm to customer
relationships. Blue Brief at 59-61. But Telebrands completely ignores the court’s
primary basis for finding irreparable harm – Telebrands and Tinnus are direct
competitors and share many of the same customers:
As the Court previously noted, the Federal Circuit has repeatedly held
that “[d]irect competition in the same market is certainly one factor
suggesting strongly the potential for irreparable harm without
enforcement of the right to exclude.” Presidio Components, Inc., v.
American Technical Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir.
2012); Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703 (Fed.
Cir. 2008); see also Douglas Dynamics v. Buyers Prods. Co., 717
F.3d 1336, 1345 (Fed. Circ. 2013) (“[w]here two companies are in
competition against one another, the patentee suffers the harm—often
irreparable—of being forced to compete against products that
incorporate and infringe its own patented inventions.”) On this basis
alone, Plaintiffs have shown a likelihood of irreparable harm absent
an injunction.
Appx25. Telebrands does not even challenge this significant finding. Instead,
Telebrands retreats back to misinterpreting the district court’s analysis.
First, Telebrands claims that the district court’s price erosion analysis
ignored actual data and focused primarily on outdated data from a “different” case.
Blue Brief at 59. The district court did no such thing. In fact, the court addressed
this same argument and found that “[t]he R&R did not rely on the evidence from
the earlier case to find a likelihood of price erosion in this case. Plaintiffs have
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63
provided ample evidence to support the Magistrate Judge’s finding that price
erosion is likely during the pendency of this litigation.” Appx41 (emphasis added).
Telebrands seems to take issue not with the district court’s findings but with
the quality of the evidence – i.e., no proof of actual price erosion. But the law only
requires a likelihood of price erosion. See Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7, 22 (2009). And, the court found that the evidence submitted by
Tinnus shows that “it is . . . foreseeable that [Tinnus] could be required to reduce
its wholesale prices for 2017 as a result of the continued sales of Telebrands’
alleged infringing Battle Balloon products to shared retailers.” Appx25.
Telebrands does not explain why this evidence, including testimony from ZURU’s
own COO, could not be considered by the court to find a likelihood of irreparable
harm. Simply because the court found Tinnus’ evidence more compelling than
Telebrands’ does not demonstrate clear error.
Telebrands next complains that the district court mistakenly evaluated the
evidence of loss of goodwill because the court did not consider that Walmart’s
decision to put sales on hold was due to “legal issues,” not as a result of sales of
Telebrands’ products. Blue Brief at 60-61. Telebrands’ argument is misplaced
because the court did not distinguish between harm due to sales and harm due to
the litigation, but rather a combination of all the factors:
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Of course, without the sale of Telebrands’ alleged infringing products,
ZURU would never have had to bring any litigation or enforce its
patent rights. Importantly, the harm here is that ZURU was deprived
of the ability to come to the market with its monopoly right, and
deprived of the opportunity to build new and gainful relationships
with retailers absent Telebrands’ presence in the market.
Appx25; Appx41 (“Plaintiffs’ relationships with their retailers were affected by
Telebrands because Plaintiffs would not be in court against their retailers if not for
Telebrands’s actions.”).
Finally, with respect to the Retailers, the district court separately found that
the Retailers’ “fire sale” activities would likely further irreparably harm Tinnus.
(Appx6400-6401, adopted in full at Appx6631-6634. Although Telebrands
separately appealed that decision, it does not challenge that finding here, and
therefore concedes that the district court properly found irreparable harm for the
Retailers.
Accordingly, Telebrands has failed to demonstrate any abuse of discretion
with the district court’s finding of irreparable harm.
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CONCLUSION
Based on the foregoing, Tinnus requests that the Court affirm the district
court’s preliminary injunction orders against Telebrands.
/s/ Thomas M. Dunlap
Thomas M. Dunlap
David Ludwig
Robert D. Spendlove
Eric Olavson
Dunlap Bennett & Ludwig PLLC
211 Church Street, SE
Leesburg, Virginia 20175
(703) 777-7319 (t)
(703) 777-3656 (f)
Jeffrey D. Ahdoot
Dunlap Bennett & Ludwig PLLC
1717 Pennsylvania Ave., Suite 1025
Washington, DC 20006
(202) 316-8558 (t)
(703) 777-3656 (f)
Brian M. Koide
Dunlap Bennett & Ludwig PLLC
8300 Boone Blvd., Suite 550
Vienna, VA 22182
(703) 777-4319
Case: 17-1175 Document: 73 Page: 78 Filed: 08/10/2017
66
Cortland C. Putbrese
Dunlap Bennett & Ludwig PLLC
2307 East Broad Street, Suite 301
Richmond, VA 23223
(804) 977-2688
Counsel for Appellees Tinnus Enterprises,
LLC and ZURU Ltd.
Case: 17-1175 Document: 73 Page: 79 Filed: 08/10/2017
CERTIFICATE OF FILING AND SERVICE
I hereby certify that on this 10th day of August, 2017, I caused this Corrected
Brief of Appellees to be filed electronically with the Clerk of the Court using the
CM/ECF System, which will send notice of such filing to the following registered
CM/ECF users:
Robert T. Maldonado David M. Underhill
Elana Araj Eric J. Maurer
COOPER & DUNHAM, LLP Stacey K. Grigsby
30 Rockefeller Plaza, Floor 20 BOIES, SCHILLER & FLEXNER, LLP
New York, New York 10112 1401 New York Avenue,
(212) 278-0509 NW, 11th Floor
[email protected] Washington, DC 20005
[email protected] (212) 274-1120
Counsel for Appellants [email protected]
Counsel for Appellants
Upon acceptance by the Clerk of the Court of the electronically filed
document, the required number of copies of the Corrected Brief of Appellees will
be hand filed at the Office of the Clerk, United States Court of Appeals for the
Federal Circuit in accordance with the Federal Circuit Rules.
/s/ Thomas M. Dunlap
Counsel for Appellees
Case: 17-1175 Document: 73 Page: 80 Filed: 08/10/2017
CERTIFICATE OF COMPLIANCE
1. This brief complies with the type-volume limitation of Fed. R. App. P.
28.1(e)(2) or 32(a)(7)(B) because:
[ X ] this brief contains [13,569] words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii), or
[ ] this brief uses a monospaced typeface and contains [state the number
of] lines of text, excluding the parts of the brief exempted by Fed. R. App. P.
32(a)(7)(B)(iii).
2. This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because:
[ X ] this brief has been prepared in a proportionally spaced typeface using
[Microsoft Word 2016] in [14pt Times New Roman]; or
[ ] this brief has been prepared in a monospaced typeface using [state
name and version of word processing program] with [state number of
characters per inch and name of type style].
Dated: August 10, 2017 /s/ Thomas M. Dunlap
Counsel for Appellees
Case: 17-1175 Document: 73 Page: 81 Filed: 08/10/2017
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