Filed on behalf of Telebrands Corp. by: Robert T. Maldonado Jeffrey L. Snow Cooper & Dunham LLP 30 Rockefeller Plaza New York, NY 10112 (212)278-0400 rmaldonado@cooperdunham.com jsnow@cooperdunham.com UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TELEBRANDS CORP. Petitioner, v. TINNUS ENTERPRISES, LLC, Patent Owner. U.S. Patent No. 9,051,066 Issued: June 9, 2015 PETITION FOR POST-GRANT REVIEW PURSUANT TO 35 U.S.C. 321-328 AND C.F.R. 42.200 et seq.
TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)... 2 A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)... 2 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 3 C. Lead and Back Up Counsel Under 37 C.F.R. 42.8(b)(3)... 3 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 3 III. ADDITIONAL REQUIREMENTS... 4 A. Payment of Fees Under 37 C.F.R. 42.15... 4 B. Timing Under 37 C.F.R. 42.202... 4 C. Grounds for Standing Under 37 C.F.R. 42.204(a)... 4 IV. SUMMARY OF THE 066 PATENT... 5 A. The Specification... 5 B. The Prosecution History of the 066 Patent... 7 V. 37 C.F.R. 42.204(b)(1)-(2): IDENTIFICATION OF THE CHALLENGE... 14 A. Statement of Requested Relief... 14 B. Person of Ordinary Skill in the Art... 15 VI. 37 C.F.R. 42.204(b)(3): CLAIM CONSTRUCTION... 16 A. Container... 17 B. Elastic Fastener... 17 C. Clamping... 18 VII. 37 C.F.R. 42.204(b)(4)-(5): IT IS MORE LIKELY THAN NOT THAT CLAIMS 1-14 OF THE 066 PATENT ARE UNPATENTABLE... 19 A. Claims 1-14 are Unpatentable Under 35 U.S.C. 112... 19 i. It Is More Likely Than Not That Claims 1-14 are Unpatentable Under 35 U.S.C. 112(b) Because the Terms Substantially and Filled Are Highly Subjective... 20 ii
ii. It Is More Likely Than Not That Claims 1-14 Are Unpatentable Under 35 U.S.C. 112(a) & (b) Because The Term Connecting Force Is Indefinite and Non-Enabled... 24 iii. It Is More Likely Than Not That Claims 7 and 9 are Unpatentable Under 35 U.S.C. 112(b) Because The Clamp Lacks Antecedent Basis and The Scope of the Claims is Unclear... 26 B. It is More Likely Than Not That Claims 1-4, 7-9, and 11-14 are Unpatentable Under 35 U.S.C. 103... 28 i. Description of the Prior Art... 28 a. U.S. Patent No. 5,826,803 ( Cooper )... 28 b. U.S. Patent Application Publication No. 2013/0118640... 30 ( Saggio )... 30 c. WIPO Publication No. 2015/027187 ( Harter )... 32 d. U.S. Patent Application Publication No. 2005/0004430... 33 ( Lee )... 33 e. The ZORBZ Replicator... 34 f. U.S. Patent No. 8,479,776 ( Berardi )... 36 ii. It Is More Likely Than Not That Claims 1-4, 8 and 14 are Unpatentable Under 35 U.S.C. 103 As Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) 37 a. Independent Claim 1... 40 b. Claims 2 and 14... 50 c. Claim 3... 51 d. Claim 4... 51 e. Claim 8... 52 iii. It Is More Likely Than Not That Claims 11-13 are Unpatentable Under 35 U.S.C. 103 as Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and Further In View of U.S. Patent No. 8,479,776 ( Berardi )... 52 iii
iv. It Is More Likely Than Not That Claims 1-4, 7-9, and 14 are Unpatentable Under 35 U.S.C. 103 As Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and U.S. Patent Application Publication No. 2005/0004430 ( Lee )... 54 a. Independent Claim 1... 55 b. Claims 2-4, 8 and 14... 60 c. Claim 7... 60 d. Claim 9... 61 v. It Is More Likely Than Not That Claims 11-13 are Unpatentable Under 35 U.S.C. 103 as Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and U.S. Patent Application Publication No. 2005/004430 ( Lee ) and Further In View of U.S. Patent No. 8,479,776 ( Berardi )... 62 vi. It Is More Likely Than Not That Claims 1-4, 8, and 14 are Unpatentable Under 35 U.S.C. 103 as Obvious over the ZORBZ Replicator in view of (1) WIPO Publication No. WO 2015/027187 ( Harter ); (2) U.S. Patent Application Publication No. 2013/018640 ( Saggio ); or (3) U.S. Patent Application Publication No. 2005/0004430 ( Lee )... 62 a. Independent Claim 1... 66 b. Claims 2 and 14... 74 c. Claim 3... 74 d. Claim 4... 76 e. Claim 8... 76 vii. It Is More Likely Than Not That Claims 7 and 9 are Unpatentable Under 35 U.S.C. 103 As Obvious Over the ZORBZ Replicator in view of Harter or Saggio and Further in View of Lee or the ZORBZ Replicator in view of Lee. 76 viii. It Is More Likely Than Not That Claims 11-13 are Unpatentable Under 35 U.S.C. 103 as Obvious over the ZORBZ Replicator in view of (1) Harter; (2) Saggio; or (3) Lee and Further in View of Berardi... 77 VIII. CONCLUSION... 79 iv
TABLE OF AUTHORITIES Petition for Post-Grant Review Cases Bose Corp. v. JBL, Inc., 274 F. 3d 1354 (Fed. Cir. 2001)... 26 Datamize LLC v. Plumtree Software, Inc., 417 F. 3d 1342 (Fed. Cir. 2005).... 21, 24 Dealersocket, Inc. v. Autoalert, Inc., No. CBM2014-00146, Paper No. 19 (PTAB Dec. 9, 2014)... 24 Halliburton Energy Servs., Inc. v. M-I LLC, 514 F. 3d 1244 (Fed. Cir. 2008)... 20 In re Cuozzo Speed Techn., LLC, 778 F. 3d 1271 (Fed. Cir. 2015)... 16 In re Montgomery, 677 F. 3d 1375 (Fed. Cir. 2012)... 16 In re Oetiker, 951 F. 2d 1267 (Fed. Cir. 1991)... 26 In re Packard, 751 F. 3d 1307 (Fed. Cir. 2014)... 26 In re Trans Texas Holdings Corp., 498 F. 3d 1290 (Fed. Cir. 2007)... 19 Interval Licensing, LLC v. AOL, Inc., 766 F. 3d 1364 (Fed. Cir. 2014).... 20, 24 v
Nautilus, Inc. v. Biosig Inst., Inc., 124 S. Ct. 2120 (2014)... 20 New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002)... 11 Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)... 19 Statutes 35 U.S.C. 112(b) (2013)... 20 35 U.S.C. 112(a) (2013)... 19 Other Authorities M.P.E.P. 2173.05(e)... 26 Rules 37 C.F.R. 42.10(b)... 3 37 C.F.R. 42.15(b)(1)-(4)... 4 37 C.F.R. 42.200(b)... 16 37 C.F.R. 42.202(a)... 4 37 C.F.R. 42.204(b)... 14 37 C.F.R. 42.8 (b)(1)... 2 37 C.F.R. 42.8(b)(2)... 3 37 C.F.R. 42.8(b)(3)... 3 37 C.F.R. 42.8(b)(4)... 3 vi
EXHIBIT LIST Exhibit 1001 U.S. Patent No. 9,051,066 Exhibit 1002 U.S. Provisional Application No. 61/937,083 Exhibit 1003 U.S. Provisional Application No. 61/942,193 Exhibit 1004 Office Action mailed November 14, 2014 Exhibit 1005 Exhibit 1006 Response to Examiner s Action and Amendment Submitted January 20, 2015 Notice of Allowance and Examiner s Amendment mailed April 7, 2015 Exhibit 1007 Notice of Allowance mailed May 11, 2015 Exhibit 1008 Noodlehead Sprinkler Exhibit 1009 U.S. Patent No. 5,826,803 Exhibit 1010 U.S. Patent Application Publication No. 2013/0118640 Exhibit 1011 U.S. Patent Application Publication No. 2005/0004430 Exhibit 1012 Images of ZORBZ Replicator from https://www.youtube.com/watch?v=wcajj0kpv7c Exhibit 1013 WIPO Publication No. WO 2015/027187 Exhibit 1014 U.S. Patent No. 8,479,776 Exhibit 1015 Exhibit 1016 Exhibit 1017 Declaration of Dr. Ken Kamrin Declaration of Dr. Greg Saggio Declaration of Kendall Harter Exhibit 1018 YouTube video of the ZORBZ Replicator published August 19, 2014, https://www.youtube.com/watch?v=wcajj0kpv7c vii
I. INTRODUCTION Petition for Post-Grant Review Petitioner Telebrands Corp. ( Telebrands ) respectfully requests Post-Grant Review ( PGR ) of claims 1-14 ( the 066 Patent ), entitled System and Method for Filling Containers with Fluids, which issued June 9, 2015, to Tinnus Enterprises, LLC ( Tinnus ). (Exhibit 1001.) The 066 Patent was filed on September 22, 2014, claiming the benefit of priority to two provisional patent applications, filed February 7, 2014 and February 20, 2014, respectively. The sole independent claim of the 066 Patent claims an apparatus having a plurality of containers removably attached to corresponding flexible hollow tubes with elastic fasteners that automatically seal the containers. The provisional patent applications do not disclose flexible hollow tubes. As such, the effective filing date of claims 1-14 in the 066 Patent is September 22, 2014. The 066 Patent is simply directed to an apparatus for simultaneously filling multiple containers with a fluid. There is nothing new and/or non-obvious about the combination of elements claimed in the 066 Patent. Devices for filling multiple self-sealing containers with a fluid at one time were well-known to those skilled in the art and disclosed prior to the effective filing date of the 066 Patent. During prosecution of the 066 Patent, an Amendment was made to independent claim 1 prior to issuance of the Notice of Allowance, adding functional limitations directed to (a) forces acting on the containers by the elastic fasteners when the containers are 1
substantially filled with a fluid; and (b) forces acting on the substantially filled containers when they are removed from the hollow tubes. These functional limitations are contrary to elementary principles of physics that were well-known to those skilled in the art long before the 066 Patent was filed and do not impart patentability on the claims. Moreover, the term substantially filled as set forth in independent claim 1 of the 066 Patent is indefinite. Each of the containers are expandable, and the specification describes a container as filled when it reaches a desired size. Accordingly, the term substantially filled is subjective, and the 066 Patent does not inform with reasonable certainty, those skilled in the art about the scope of the claims. Therefore, it is more likely than not that claims 1-14 of the 066 Patent are unpatentable under 35 U.S.C. 103 and 112, and the Board should institute postgrant review of claims 1-14 of the 066 Patent. II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) Pursuant to 37 C.F.R. 42.8 (b)(1), the real party-in-interest for this Petition is Telebrands Corp., a corporation organized under the laws of the State of New Jersey, having a place of business at 79 Two Bridges Road, Fairfield, New Jersey 07004. 2
B. Related Matters Under 37 C.F.R. 42.8(b)(2) Petition for Post-Grant Review Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner identifies the following judicial matters that could be affected by a decision in this proceeding: Zuru Ltd. v. Telebrands Corp., Civil Action No. 15-CV-00548-CCC-JBC (D.N.J.); and Tinnus Enterprises, LLC et al. v. Telebrands Corporation et al., Civil Action No. 6:15-cv- 00551-RWS-JDL (E.D. Tex.). C. Lead and Back Up Counsel Under 37 C.F.R. 42.8(b)(3) Pursuant to 37 C.F.R. 42.8(b)(3), lead counsel and back-up counsel for this Petition are Robert T. Maldonado (Reg. No. 38,232) and Jeffrey L. Snow (Reg. No. 39,037), respectively. Pursuant to 37 C.F.R. 42.10(b), Petitioner has filed a power of attorney designating the above-identified counsel. follows: D. Service Information Under 37 C.F.R. 42.8(b)(4) Pursuant to 37 C.F.R. 42.8(b)(4) service information for the Petition is as Robert T. Maldonado Cooper & Dunham LLP 30 Rockefeller Plaza, 20th Floor New York, New York 10112 Tel: (212) 278-0509 Fax: (212) 391-0525 Email: Rmaldonado@cooperdunham.com Email: pdocketing@coooperdunham.com Jeffrey L. Snow Cooper & Dunham LLP 30 Rockefeller Plaza, 20th Floor New York, New York 10112 Tel: (212) 278-0508 Fax: (212) 391-0525 Email: Jsnow@cooperdunham.com Email: Earaj@cooperdunham.com Petitioner consents to electronic service at the above-identified email addresses. 3
III. ADDITIONAL REQUIREMENTS Petition for Post-Grant Review A. Payment of Fees Under 37 C.F.R. 42.15 Pursuant to 37 C.F.R. 42.15(b)(1)-(4), Petitioner submits concurrently herewith the fees due on filing a petition for Post-Grant Review. The fees include (1) the $12,000 Post-Grant Review request fee; and (2) the $18,000 Post-Grant Review Institution Fee. Authorization is hereby given to charge the amount of such fees to Deposit Account No. 03-3125. Petitioner submits that the number of claims requested for review is fourteen (14). Accordingly, no fees are due under 37 C.F.R. 42.15(b)(3)-(4). B. Timing Under 37 C.F.R. 42.202 The 066 Patent issued on June 9, 2015. Pursuant to 37 C.F.R. 42.202(a), a petition for post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent. The deadline to file a petition for post-grant review of the 066 Patent is March 9, 2016. Accordingly, this Petition is being timely filed. C. Grounds for Standing Under 37 C.F.R. 42.204(a) Petitioner hereby certifies that the 066 Patent is available for post-grant review and that Petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims on the grounds identified in this Petition. The 066 Patent was filed on September 22, 2014, claiming the benefit of priority to 4
provisional applications filed February 7, 2014 and February 20, 2014, respectively. Accordingly, the 066 Patent has an effective filing date that is on or after March 13, 2013 and is subject to the first-inventor-to-file provisions of the America Invents Act. Moreover, as set forth in Section III(B) above, this Petition is filed within nine months after the date of the grant of the 066 Patent. Accordingly, the 066 Patent is available for post-grant review. Furthermore, Petitioner has not filed a civil action challenging the validity of a claim of the 066 Patent. Accordingly, Petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims on the grounds identified in this petition. IV. SUMMARY OF THE 066 PATENT A. The Specification On February 7, 2014, Applicant, Tinnus Enterprises, LLC ( Tinnus ), filed a provisional patent application for a System and Method for Filling Inflatable Containers with Liquid. (the February 7, 2014 Provisional ) (Exhibit 1002.) The February 7, 2014 Provisional discloses a system having a housing, tubes, balloons, and O-rings. (Id. at p. 3.) One end of the housing is connected to a liquid supply tube and the other end of the housing includes an array of holes, with one tube attached to the housing at each hole. (Id.) The O-rings are used to attach the balloons to the tubes. (Id.) The February 7, 2014 Provisional describes the balloons as inflatable containers being made of elastic materials, such as rubber and silicone. 5
(Id. at p. 5.) The February 7, 2014 Provisional additionally describes the housing and tubes as being made of relatively rigid materials, like metal, hard plastic, etc. (Id.) In use, a liquid flows through the housing, tubes, and into the balloons. (Id.) When the balloons are filled to a desired size, a user removes the balloons from the tubes by shaking the housing or pulling the balloons off of the tubes. (Id.) Each O- ring slides off of the tube with its respective balloon and constricts the neck of the balloon to seal it. (Id.) On February 20, 2014, Mr. Malone filed a second provisional patent application, entitled System and Method for Filling Inflatable Containers with Fluids. ( the February 20, 2014 Provisional ) (Exhibit 1003.) The only difference between the February 7, 2014 Provisional and the February 20, 2014 Provisional is that the inflatable containers in the latter can be used to collect fluids, such as liquids and gases, whereas the inflatable containers in the February 7, 2014 Provisional are only used to collect liquids. (Compare Exhibit 1002 at p. 1 to Exhibit 1003 at p. 1.) On September 22, 2014, Mr. Malone filed a non-provisional application ( the 066 Patent Application ), claiming the benefit of priority to each of the February 7, 2014 and February 20, 2014 Provisionals. (Exhibit 1001.) In addition to disclosing the system set forth in the Provisionals, the 066 Patent Application contained new disclosure related to additional embodiments of the previously disclosed system. For example, the 066 Patent Application set forth that: 6
In some embodiments, hollow tubes 16 may be made of a rigid material (e.g., steel, glass); in other embodiments, tubes 16 may be made of a flexible material (e.g., thin plastic). In some embodiments, tubes 16 may be thick, short and rigid; in other embodiments, tubes 16 may be slender, long and flexible. Thus, hollow tubes 16 may be flexible, semirigid, or rigid, based on its material of construction, design, or a combination thereof. (Emphasis Added.) (Id. at Col. 4, lines 10-17.) Moreover, the 066 Patent Application disclosed additional embodiments of devices for attaching the inflatable containers to the tubes and sealing the inflatable containers when they are removed from the tubes. For example, in the February 7, 2014 and February 20, 2014 Provisionals, the devices for attaching and sealing were limited to elastic rings, such as O-rings. (Exhibit 1002 at p. 3; Exhibit 1003 at p. 4.) However, in the 066 Patent Application, the devices for attaching and sealing the inflatable containers are disclosed as elastic valves and/or elastic fasteners that can be located on internal or external portions of the inflatable containers. (Exhibit 1001 at Col. 2, lines 51-67.) B. The Prosecution History of the 066 Patent The 066 Patent Application was filed on September 22, 2014 and accompanied by a petition for Track I/Expedited Examination. A Preliminary Amendment was filed on October 14, 2014, which canceled certain claims originally filed with the 066 Patent Application. On November 14, 2014, the Examiner issued 7
a first Office Action. ( the November 14, 2014 Office Action ) (Exhibit 1004.) The November 14, 2014 Office Action set forth that the claims of the 066 Patent Application were examined under the first inventor to file provisions of the AIA. (Id. at p. 3.) All of the pending claims were rejected. (Id. at p. 2.) In the November 14, 2014 Office Action, the Examiner relied on only two prior art references, U.S. Patent No. 6,007,403 to Urspringer and U.S. Patent Application Publication No. 2008/0121309 to Boise. (Id. at p. 4-6.) With respect to independent claim 1, the Examiner asserted that the combination of Urspringer and Boise taught an apparatus comprising a housing having a plurality of holes, a plurality of hollow tubes attached to the plurality of holes, a plurality of containers removably attached to the hollow tubes, and a plurality of elastic fasteners attaching the containers to the hollow tubes and sealing the containers when the containers are removed from the hollow tubes. (Id. at p. 6-7.) An Amendment and Response to the Office Action was filed on January 20, 2015, in which independent claim 1 was amended in attempt to distinguish the claim over the combination of Urspringer and Boise. (Exhibit 1005 at p. 2.) The amendments to independent claim 1 further defined the plurality of holes in the housing as a two-dimensional array and further defined the elastic fastener as one that is configured to automatically seal its respective one of the plurality of containers upon detaching from the corresponding hollow tube. (Id.) Moreover, 8
the Amendment introduced the noun clamp to dependent claims 7 and 9 without antecedent basis. (Id. at p. 3, original claims 8 and 9.) Indeed, the Amendment removed the term elastic fastener from dependent claim 9 and added the term clamp. (Id.) The term clamp was not introduced to independent claim 1. (Id. at p. 2.) On April 7, 2015, a Notice of Allowance was issued allowing independent claim 1 and claims 3-10, 12-15 and 29 depending therefrom. (Exhibit 1006.) The Notice of Allowance was accompanied by an Examiner s Amendment, which (1) further defined the structure of the holes in the housing as extending through a common face; (2) limited the plurality of hollow tubes to flexible hollow tubes; (3) added a limitation that the apparatus is configured to fill the containers substantially simultaneously with a fluid; and (4) added functional limitations with respect to the elastic fastener. (Id. at p. 6-7.) The functional limitations with respect to the elastic fastener attempted to define the ability of the elastic fastener to provide a connecting force that removably attaches a container to a respective hollow tube when the container is substantially filled with water, and defined a force, i.e., shaking, that, when applied to the hollow tube, will overcome the connecting force and detach the container from the hollow tube when the containers are substantially filled with water. (Id.) The functional limitations, however, were incorrectly worded. 9
In the Reasons for Allowance, the Examiner specifically stated that the common face amendment to independent claim 1 distinguishes the claim over Boise. (Id. at p. 7-8.) Moreover, the Examiner stated that the amendments defining the functional capability of the elastic fasteners and the amendments of January 20, 2015 defining the elastic fasteners as ones that are configured to automatically seal the containers distinguish independent claim 1 from Urspringer. (Id.) Accordingly, the Examiner concluded that the combination of Urspringer and Boise does not disclose the combination of elements in independent claim 1, as amended per the Examiner s Amendment. 1 (Id.) On April 21, 2015, after issuance of the April 7, 2015 notice of allowance, Tinnus filed an information disclosure statement, disclosing, among other references, a YouTube video of the ZORBZ Replicator an apparatus for filling multiple self-sealing water balloons at one time, which published August 19, 2014 over one month prior to the filing date of the 066 Patent Application. This reference had been known to Mr. Malone since the summer of 2014, but was never disclosed 1 The Examiner s Reasons for Allowance sets forth that these distinguishing features and all other claimed subject matter in claim 1 define an apparatus which is not anticipated nor obvious from Boise, Urpsringer and the other prior art of record. (Exhibit 1006 at p. 8.) However, throughout prosecution, the Examiner s remarks are limited to discussions of Boise and Urspringer. (Id.; Exhibit 1004 at p. 6-7) The Examiner s Reasons for Allowance does not provide any remarks with respect to why allowed independent claim 1 is distinguished from the features taught in the other prior art of record. (Exhibit 1006 at p. 7-8) 10
previously. In a second Notice of Allowance, dated May 11, 2015, the Examiner stated that the earlier determination of allowability does not change because the allowed claims [allegedly] have support in the February 7, 2014 Provisional. (Exhibit 1007 at p. 3.) Indeed, the Examiner suggested that if the allowed claims in the 066 Patent do not have support in the February 7, 2014 Provisional, the earlier determination of allowability may change based on the YouTube video of the ZORBZ Replicator. (See Id.) C. The Effective Filing Date of the 066 Patent is September 22, 2014 The term effective filing date for a claimed invention in a patent or application for patent means (A)... the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c). 35 U.S.C. 100(i)(1). In order for the filing date of a provisional application to be the effective filing date, the specification of the provisional must contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, 35 U.S.C. 112 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002). That is, the 11
disclosure must show [the inventor] had invented each feature that is included as a claim limitation. Id. Here, the specifications of the February 7, 2014 and February 20, 2014 Provisionals do not enable one of ordinary skill in the art to practice the invention claimed in the 066 Patent. Accordingly, the effective filing date of the 066 Patent is the actual filing date of the 066 Patent Application September 22, 2014. Independent claim 1 the sole independent claim of the 066 Patent, sets forth, among other things, a plurality of flexible hollow tubes... (Emphasis added.) (Exhibit 1001 at Col. 6, line 34.) The February 7, 2014 and February 20, 2014 Provisionals do not disclose this claim limitation. Rather, the February 7, 2014 and February 20, 2014 Provisionals explicitly disclose that the tubes are made of relatively rigid materials like metal, hard plastic, etc. (Exhibit 1002 at p. 5; Exhibit 1003 at p. 5.) One skilled in the art would not understand the February 7, 2014 Provisional to teach that the tubes are flexible. (Declaration of Dr. Ken Kamrin ( Kamrin Decl. ), Exhibit 1015 at 19.) Rather, one skilled in the art would understand the term rigid to by synonymous with the plain meaning of the term as defined in the Merriam-Webster Dictionary, i.e., deficient in or devoid of flexibility. (Id. at 18, Exhibit B.) Moreover, the specification of the 066 Patent Application filed on September 22, 2014 explicitly defines flexible as a separate 12
category from rigid and semi-rigid materials. (Exhibit 1001 at Col. 4, lines 10-17.) Indeed, the specification of the 066 Patent sets forth, In some embodiments, hollow tubes 16 may be made of a rigid material (e.g., steel, glass); in other embodiments, tubes 16 may be made of a flexible material (e.g., thin plastic). In some embodiments, tubes 16 may be thick, short and rigid; in other embodiments, tubes 16 may be slender, long and flexible. Thus, hollow tubes 16 may be flexible, semi-rigid, or rigid, based on its material of construction, design, or a combination thereof. (Emphasis Added.) (Id.) This definition identifies three separate and distinct states for the hollow tubes: flexible, semi-rigid, or rigid. (Id.) Relatively rigid, as disclosed in the February 7, 2014 Provisional, is semi-rigid or rigid. Flexible hollow tubes are not disclosed in the February 7, 2014 and February 20, 2014 Provisional Applications. As such, the limitation a plurality of flexible hollow tubes... is not supported by the February 7, 2014 and February 20, 2014 Provisional Applications. Therefore, for the purposes of this proceeding, Petitioner respectfully submits that the effective filing date of the 066 Patent is the actual date that the 066 Patent Application was filed September 22, 2014. 13
V. 37 C.F.R. 42.204(b)(1)-(2): IDENTIFICATION OF THE CHALLENGE A. Statement of Requested Relief Pursuant to 37 C.F.R. 42.204(b), Petitioner respectfully requests post-grant review of claims 1-14 of the 066 Patent under 35 U.S.C. 321-328 and 37 C.F.R. 42.200-42.224. Moreover, in view of the accompanying prior art references and supporting declarations, Petitioner respectfully requests cancellation of claims 1-14 as unpatentable under 35 U.S.C. 103 and 112. A summary of the statutory grounds challenging claims 1-14 of the 066 Patent and the Exhibit numbers relied upon for each ground is identified below. GROUND Ground 1: Claims 1-14 are unpatentable under 35 U.S.C. 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor regards as his invention. Ground 2: Claims 1-4, 8 and 14 are unpatentable under 35 U.S.C. 103 as being obvious over U.S. Patent No. 5,826,803 ( Cooper ) in view of (1) U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) Ground 3: Claims 11-13 are unpatentable under 35 U.S.C. 103 as being obvious over Cooper in view of Saggio and further in view of U.S. Patent No. 8,479,776 ( Berardi ) Exhibit No. 1001, 1015 1008, 1009, 1010, 1015, 1016, 1017 1009, 1010, 1014, 1016 14
Ground 4: Claims 1-4, 7-9, and 14 are unpatentable under 35 U.S.C. 103 as being obvious over Cooper in view of Saggio and Lee Petition for Post-Grant Review 1008, 1009, 1010, 1011, 1015, 1016, 1017 Ground 5: Claims 11-13 are unpatentable under 35 U.S.C. 103 as being obvious over Cooper in view of Saggio and Lee and further in view of Berardi Ground 6: Claims 1-4, 8, and 14 are unpatentable under 35 U.S.C. 103 as being obvious over the ZORBZ Replicator in view of (1) Harter; (2) Saggio; or (3) Lee Ground 7: Claims 7 and 9 are unpatentable under 35 U.S.C. 103 over (1) the ZORBZ Replicator in view of Harter or Saggio and further in view of Lee; or (2) the ZORBZ Replicator in view of Lee Ground 8: Claims 11-13 are unpatentable under 35 U.S.C. 103 in view of Harter, Saggio, or Lee and further in view of Berardi 1009, 1010, 1014, 1016 1010, 1011, 1018, 1013, 1015, 1016, 1017 1010, 1011, 1018, 1013, 1015, 1016, 1017 1018, 1014, 1016 B. Person of Ordinary Skill in the Art A person of ordinary skill in the art at the time of the effecting filing date of the 066 Patent, i.e., September 22, 2014, would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate s degree in science or engineering. 15
(Declaration of Dr. Ken Kamrin ( Kamrin Decl. ), Exhibit 1015 at 10-13; Declaration of Dr. Greg Saggio ( Saggio Decl. ), Exhibit 1016 at 10-13.) VI. 37 C.F.R. 42.204(b)(3): CLAIM CONSTRUCTION During post-grant review proceedings, [a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. 42.200(b). Indeed, [t]he broadest reasonable interpretation standard affects both the PTO s determination of whether to institute [post-grant] proceedings and the proceedings after institution and is within the PTO s authority under the statute. In re Cuozzo Speed Techn., LLC, 778 F. 3d 1271, 1282 (Fed. Cir. 2015) (holding the Board properly adopted the broadest reasonable interpretation standard for claim terms in IPR proceedings). Accordingly, for the purposes of this post-grant review proceeding, the Board should construe each of the terms in claims 1-14 according to their broadest reasonable interpretation. See e.g., In re Montgomery, 677 F. 3d 1375, 1379 (Fed. Cir. 2012) ( claims... are to be given their broadest reasonable interpretation consistent with the specification, and... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art (citations omitted)). In accordance with the broadest reasonable interpretation standard and for the purposes of this post-grant review proceeding only, Petitioner submits constructions for the following claim terms. 16
A. Container Petition for Post-Grant Review The 066 Patent consistently describes each embodiment of a container as having flexible and/or elastic properties. (Exhibit 1001 at Col. 3, lines 19-40.) The specification additionally teaches that containers need not be inflatable or flexible in their entireties and describes one embodiment of a container having an inelastic bottom portion and a flexible top portion. (Id.) Each of the containers described in the specification is configured to be filled with a fluid such as water, air or helium. (Id. at Col. 3, lines 19-21.) The containers expand in response to fluid flow therein. (Kamrin Decl., Exhibit 1015 at 32.) Therefore, in accordance with its broadest reasonable interpretation, the term container should be construed to mean an object for holding a fluid that expands in response to fluid flow therein. (Id. at 29-33.) B. Elastic Fastener The 066 Patent describes an elastic fastener as an elastic valve. Exhibit 1001 at Col. 2, lines 55-57.) According to the specification, [t]he term valve refers to an object that regulates, directs, or controls the flow of fluids, by opening, closing, or partially obstructing passageways of fluid flow. (Id.) Indeed, the specification provides multiple examples of elastic valves including (1) corrugations, smocking, elastic fibers, etc. fabricated into the necks of containers such that force is required to pull open the necks of containers, and removal of the 17
force causes the necks to constrict and close ; and (2) internal or external plugs affixed to the necks of containers through which tubes may be pushed through to clamp containers thereto. (Id. at Col. 2, lines 57-67.) In view of the definitions in the specification of the 066 Patent, a person of ordinary skill in the art at the time of the invention would understand that an elastic valve could be external or internal to a container. (Kamrin Decl., Exhibit 1015 at 37.) Additionally, in view of the definitions in the specification of the 066 Patent, a person of ordinary skill in the art at the time of the invention would understand that an elastic fastener is a type of elastic valve. (Id. at 38.) Accordingly, in accordance with its broadest reasonable interpretation, the term elastic fastener should be construed to mean any internal or external object or structure that regulates, directs, or controls the flow of fluids, by opening, closing, or partially obstructing a passageway of fluid flow in a container. (Id. at 34-39.) C. Clamping The 066 Patent sets forth that [a] plurality of containers may be clamped (e.g., attached, fastened, held, clinched [sic], secured, etc.) to a plurality of tubes using elastic valves. (Exhibit 1001 at Col. 2, lines 51-53.) The specification further identifies various embodiments and/or descriptions of the containers being clamped to the plurality of tubes. (See, e.g., Id. at Col. 2, lines 57-67.) However, it is improper to confine the claims to the embodiments found in the specification. In 18
re Trans Texas Holdings Corp., 498 F. 3d 1290, 1299 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)). Indeed, it is well-settled that dictionary definitions are also pertinent when determining a term s broadest reasonable interpretation. Id. According to Merriam Webster s dictionary, the verb clamp is defined as (1) to hold or press; (2) to fasten or tighten; and (3) to press or squeeze. http://www.merriam-webster.com/dictionary/clamp. (Kamrin Decl., Exhibit 1015 at 42, Exhibit C.) As such, in accordance with its broadest reasonable interpretation, the term clamping should be construed as attaching, fastening, holding, clenching, securing, tightening, squeezing, or pressing two objects against one another. (Id. at 40-43.) VII. 37 C.F.R. 42.204(b)(4)-(5): IT IS MORE LIKELY THAN NOT THAT CLAIMS 1-14 OF THE 066 PATENT ARE UNPATENTABLE A. It Is More Likely Than Not That Claims 1-14 are Unpatentable Under 35 U.S.C. 112 It is well-settled that the specification of each patent shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 35 U.S.C. 112(a) (2013). Moreover, in any patent [t]he specification shall conclude with one or more claims particularly pointing out 19
and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 35 U.S.C. 112(b) (2013). Indeed, [a] patent is invalid for indefiniteness if its claims, read in light of the patent s specification and prosecution history, fail to inform with reasonable certainty, those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Inst., Inc., 124 S. Ct. 2120, 2123 (2014). Each of claims 1-14 in the 066 Patent contain terms that, when read in light of the specification and prosecution history are non-enabling and/or fail to inform one skilled in the art about the scope of the invention. Accordingly, it is more likely that not that claims 1-14 are indefinite under 35 U.S.C. 112. i. It Is More Likely Than Not That Claims 1-14 are Unpatentable Under 35 U.S.C. 112(b) Because the Terms Substantially and Filled Are Highly Subjective The claims, when read in light of the specification and prosecution history, must provide objective boundaries for those of skill in the art. Interval Licensing, LLC v. AOL, Inc., 766 F. 3d 1364, 1371 (Fed. Cir. 2014). While absolute or mathematical precision is not required, the Supreme Court has noted that [i]t cannot be sufficient that a court can ascribe some meaning to a patent s claims. Id.; Nautilus, 124 S. Ct. at 2130. Accordingly, [e]ven if a claim term s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningful precise claim scope. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F. 3d 1244, 1251 (Fed. Cir. 2008). Here, the 20
scope of the term substantially filled as set forth in independent claim 1, when read in light of the specification and prosecution history of the 066 Patent, depends on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1351 (Fed. Cir. 2005). Accordingly, it is more likely than not that claims 1-14 are unpatentable under 35 U.S.C. 112(b). Independent claim 1 recites, among other things, each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water. (Exhibit 1001 at Col. 6, lines 41-44.) The 066 Patent fails to provide an objective definition for when the containers are filled. As previously discussed in Section VI(A) above, for the purposes of this proceeding, a person of ordinary skill in the art would understand the term container to mean an object for holding a fluid that expands in response to fluid flow therein. The specification of the 066 Patent describes the containers as inflatable balloons or flexible containers that may be filled with body fluids (e.g., urine, blood ) for example.... (Id. at Col. 3, lines 19-40.) Moreover, the specification of the 066 Patent also describes the containers as elastic. (Id.) According to the specification, the term elastic is meant to refer to a property of a material that allows the material to resume its normal shape spontaneously after contraction, dilation, or distortion. (Id.) In one example, an elastic material may be 21
stretched to 200% of its original length, and the material may return to its original length when the stretching force is removed. (Id.) However, the specification does not provide an objective definition for when the expandable containers are filled. A person of ordinary skill in the art prior to the effective filing date of the 066 Patent would understand that given the elastic type of container chosen, the material make-up the container, and an individual s desired use for the container, an expandable container can be considered filled at any time prior to when the expandable container reaches its expansion limit and explodes. (Kamrin Decl., Exhibit 1015 at 57.) For example, if the expandable container is a water balloon, a person of ordinary skill in the art would understand that it can be filled with a fluid until it bursts. (Id. at 56.) The point at which the balloon will burst will vary from balloon to balloon, depending on the elastic properties of the material. (Id.) Therefore, there is no point in time where the water balloon is considered filled. Rather, the water balloon is progressively filled with water until it bursts. Alternatively, if the container is used to collect a bodily fluid, one skilled in the art would understand that the expandable container may be used to collect a specific sample size, which may be any amount necessary for the specific medical purpose of the sample. Therefore, the container may or may not be filled, and whether it is filled will depend on the application. A person of ordinary skilled in the art at the time of the invention would understand that an expandable container 22
can be considered filled prior to when the expandable container reaches its expansion limit. (Id. at 57.) Indeed, even the specification sets forth that the expandable containers are only filled when an individual subjectively determines that a desired size of a container has been reached. (Exhibit 1001 at Col. 3, lines 48-49; Col. 4, lines 60-62.) ( After containers have reached a desired size or volume they may be detached from tubes ; When containers have reached a desired size and/or they are filled with the desired volume of fluid, they may be removed from tubes. ) A person of ordinary skill in the art at the time of the invention would understand that an expandable container may be considered filled based upon the type of container chosen, the material make-up the container, and an individual s subjective desired use for the container. These are subjective considerations. (Kamrin Decl., Exhibit 1015 at 55.) Accordingly, since the type of elastomer used to manufacture the containers and the thickness thereof are not specified, the specification of the 066 Patent does not provide an objective boundary for when an expandable container is filled. (Id. at 58.) The specification of the 066 Patent provides no meaningful, precise scope that enables one skilled in the art to determine when the expandable container, of variable volume is filled, particularly when the volume of the elastic container changes with time. Accordingly, the term filled is indefinite. 23
The lack of clarity of the term filled is further enhanced by the modifier, substantially, which is a term of degree. A term of degree fails to provide sufficient notice of its scope if it depends on the unpredictable vagaries of any one person s opinion. Interval Licensing, 766 F. 3d at 1371 (quoting Datamize, 417 F. 3d at 1350). Indeed, [t]he uncertainty is multiplied when one subjective term is used to modify another, as is the case here. Dealersocket, Inc. v. Autoalert, Inc., No. CBM2014-00146, Paper No. 19 at 21 (PTAB Dec. 9, 2014). The specification and prosecution history do not provide objective boundaries for those of ordinary skill in the art for the term filled, let alone the term substantially filled. Indeed, the term substantially does not appear anywhere in the specification of the 066 Patent. The specification only refers to the term filled. Accordingly, a person of ordinary skill in the art at the time of the invention of the 066 Patent would not be able to determine, with reasonable certainty, when a container is substantially filled. (Kamrin Decl., Exhibit 1015 at 59.) Therefore, it is more likely than not that the term substantially filled is indefinite and claims 1-14 of the 066 Patent are unpatentable under 35 U.S.C. 112(b). ii. It Is More Likely Than Not That Claims 1-14 Are Unpatentable Under 35 U.S.C. 112(a) & (b) Because The Term Connecting Force Is Indefinite and Non-Enabled The term connecting force in independent claim 1 is dependent on the definition of the indefinite term substantially filled : a connecting force that is not 24
less than a weight of one of the containers when substantially filled with water. (Exhibit 1001 at Col. 6, lines 41-47.) Because the specification of the 066 Patent does not provide an objective boundary for when an expandable container is substantially filled, it follows that a person of ordinary skill in the art at the time of the invention of the 066 Patent would not be able to determine, with reasonable certainty, the amount of the connecting force that the elastic fastener is configured to provide. (Kamrin Decl., Exhibit 1015 at 60.) Accordingly, it is more likely than not that connecting force is also indefinite, and claims 1-14 of the 066 Patent are unpatentable under 35 U.S.C. 112(b). Furthermore, the 066 Patent is indefinite and non-enabling with respect to the term connecting force, because it is inconsistent with the basic laws of physics. (Kamrin Decl., Exhibit 1015 at 72.) The connecting force cannot be greater than the weight of the container. (Id. at 73) If the true connecting force is not less than a weight of one of the containers, i.e., greater than the weight of the container, the connecting force would cause the container to move upwards on the hollow tube. (Id.) This type of connecting force is not described in the 066 Patent. (Id.; Exhibit 1001.) The 066 Patent does not describe containers inching up the tubes. (Id.) Indeed, if the connecting force is not less than the weight of the container, the container will never detach from the flexible hollow tube. (Kamrin Decl., Exhibit 1015 at 73.) Accordingly, the 066 Patent is non-enabling with respect to the term 25
connecting force and one skilled in the art would not know the scope of connecting force as set forth independent claim 1 with reasonable certainty. Therefore, it is more likely than not that claims 1-14 are unpatentable under 35 U.S.C. 112(a) and (b). iii. It Is More Likely Than Not That Claims 7 and 9 are Unpatentable Under 35 U.S.C. 112(b) Because The Clamp Lacks Antecedent Basis and The Scope of the Claims is Unclear It is well-settled that the USPTO may reject a claim as indefinite under 35 U.S.C. 112(b), where claim terms lack antecedent basis. See, M.P.E.P. 2173.05(e); see also, In re Oetiker, 951 F. 2d 1267 (Fed. Cir. 1991); see also, In re Packard, 751 F. 3d 1307 (Fed. Cir. 2014). Moreover, a claim in an issued patent may be indefinite when a claim term lacks explicit antecedent basis and the scope of the claim is not reasonably ascertainable by those skilled in the art. See, e.g., Bose Corp. v. JBL, Inc., 274 F. 3d 1354, 1359 (Fed. Cir. 2001). Here, the term clamp in each of claims 7 and 9 lacks antecedent basis, as it is not recited in independent claim 1, from which claims 7 and 9 depend, and further is not described in the specification of the 066 Patent. As a result, the scope of claims 7 and 9 is unclear to one skilled in the art, and it is more likely than not that claims 7 and 9 are unpatentable under 35 U.S.C. 112(b). The term clamp did not appear in the 066 Patent as an affirmative element of the claimed apparatus until an amendment submitted by the Patent Owner, dated 26
January 20, 2015. (Exhibit 1005 at p. 3.) In the January 20, 2015 Amendment, the Patent Owner amended claim 7 to recite, wherein the clamp is disposed outwardly from the container and clamps an inner surface of the container against an outer surface of the respective one of the plurality of tubes. (Id. at original claim 8) (Emphasis added.) In that same amendment, the Patent Owner amended claim 9 by specifically replacing the term elastic fastener with clamp. (Id. at original claim 10) (Emphasis added.) Claims 7 and 9 each depend from independent claim 1, however the term clamp never appeared as an affirmative an element of independent claim 1 during prosecution of the 066 Patent. Prior to the January 20, 2015 Amendment, the term clamp was only used during prosecution of the 066 Patent application as a verb to describe an action of the elastic fastener. (See, e.g., Exhibit 1001 at Col. 2, lines 51-53.) Moreover, a clamp is not defined in the specification of the 066 Patent. Rather, clamp only appears as a verb, referring to actions of elastic valves, elastic fasteners, and/or O-rings. (Id.) Because the noun clamp does not appear in the specification of the 066 Patent, one skilled in the art would define the term according to its plain, ordinary meaning, i.e., a device designed to bind or constrict or to press two or more parts together so as to hold them firmly. (See definition of clamp in Merriam-Webster s Dictionary, available at http://www.merriamwebster.com/dictionary/clamp.) (Kamrin Decl., Exhibit 1015 at 69, Exhibit C.) 27
The scope of each of claims 7 and 9 is unclear to one skilled in the art. (Id. at 61-70.) One skilled in the art would not equate the claimed clamp to the elastic fastener of independent claim 1, as the Patent Owner specifically deleted the term elastic fastener from dependent claim 9 and replaced it with a broader term, clamp. (Id. at 66.) Indeed, the term clamp in accordance with its plain, ordinary meaning impermissibly broadens the term elastic fastener, as a clamp does not have to be an elastic device. (Id. at 70.) See, Enzo Biochem, Inc. v. Applera Corp., 780 F. 3d 1149, 1156 ( dependent claims cannot broaden an independent from which they depend. ). Accordingly, claims 7 and 9, read in light of the of the 066 Patent s specification and prosecution history, fail to inform with reasonable certainty, those skilled in the art about the scope of the invention, and it is more likely than not that claims 7 and 9 are unpatentable under 35 U.S.C. 112(b). B. It is More Likely Than Not That Claims 1-4, 7-9, and 11-14 are Unpatentable Under 35 U.S.C. 103 i. Description of the Prior Art a. U.S. Patent No. 5,826,803 ( Cooper ) In the late 1990 s, Randy Cooper began selling to the public the Noodlehead sprinkler, a lawn and garden sprinkler having a plurality of flexible tubes extending from a housing. (Exhibit 1008 at p. 1.) An image of the Noodle Head sprinkler is shown below ( IMAGE NO. 1 ). 28
IMAGE NO. 1 (Exhibit 1008.) U.S. Patent No. 5,826,803 to Cooper (hereafter Cooper ), which issued on October 27, 1998 covers the Noodlehead sprinkler. Figure 4 of Cooper is shown below ( IMAGE NO. 2 ). (Exhibit 1009.) Housing Common face with holes Flexible Hollow Tubes Threaded inlet IMAGE NO. 2 As illustrated in IMAGE NO. 2 the sprinkler includes a housing. One end of the housing includes a common face with a plurality of holes, and another, opposite end includes a threaded inlet for attaching to a fluid source, such as a garden hose. 29
(Id. at Col. 2, lines 24-28.) IMAGE NO. 2 additionally illustrates that the common face has a plurality of holes that receive corresponding flexible hollow tubes. The sprinkler is configured such that when the threaded inlet is attached to a fluid source, such as a garden hose, water may simultaneously flow through the flexible hollow tubes. (Id. at Col. 1, lines 47-67.) b. U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) U.S. Patent Application Publication No. 2013/0118640 to Saggio (hereafter Saggio ) also teaches a hose attachment having multiple tubes extending therefrom. (Exhibit 1010 at FIG. 7, elements 28 and 36; [0022]-[0023].) An image of the hose attachment is shown below ( IMAGE NO. 3 ). IMAGE NO. 3 Saggio teaches that the hose attachment can be used to simultaneously fill multiple water balloons at one time. (Id. at [0022].) Each of the water balloons is 30
made of an elastic material and includes an outer wall and a self-sealing mechanism. The self-sealing mechanism is an elastic internal membrane. (Id. at FIG. 2, elements 12 and 18, respectively.) The elastic internal membrane forms a fluid passageway in the balloon. (Saggio Decl., Exhibit 1016 at 40.) The fluid passageway is through the neck of the balloon and around the elastic internal membrane into a compartment formed between the elastic internal membrane and the wall of the balloon. (Id.) A diagram showing the compartment is illustrated below ( IMAGE NO. 4 ). (Id.) IMAGE NO. 4 The elastic internal membrane includes a closure member (Exhibit 1010 at FIG. 2, element 24; Saggio Decl., Exhibit 1016 at 41.) After the compartment is filled with a desired amount of fluid, the balloon is detached and fluid pressure on the closure member causes it to automatically seal within the compartment in the balloon. (Saggio Decl., Exhibit 1016 at 41; Exhibit 1010 at [0021].) 31
Additionally, as shown in IMAGE NO. 3 above, the hose attachment includes valves that are capable of transitioning between open and closed positions for controlling water flow in and out of the tubes. (Exhibit 1010 at FIG. 7, element 38, [0025].) c. WIPO Publication No. 2015/027187 ( Harter ) Kendall Harter (hereafter Mr. Harter ), the CEO of Blue Matrix Labs, LLC, invented the ZORBZ self-sealing water balloons. (Declaration of Kendall Harter ( Harter Decl. ), Exhibit 1017 at 5, 9.) The ZORBZ self-sealing water balloons are covered by WIPO Publication No. WO 2015/027187 to Harter (hereafter Harter ), which published on February 26, 2015 and claims priority to U.S. Application No. 13/974,888, filed on August 23, 2013. (Id. at 8; Exhibit 1013.) Indeed, the YouTube video of the ZORBZ Replicator (https://www.youtube.com/watch?v=wcajj0kpv7c; see section e below) shows the ZORBZ self-sealing water balloons removably attached to the flexible hollow tubes. (Exhibit 1018, See also Exhibit 1012; Harter Decl., Exhibit 1017 at 27.) Harter discloses that the self-sealing mechanism in the balloon is a check valve ball interacting with a seating shoulder of the balloon. (Exhibit 1013 at FIGS. 1 & 2, elements 110 & 112, [0040].) The seating shoulder is an indented ring portion on the neck of the balloon that is made of elastomeric material and is thicker than the remaining portions of the balloon in order to retain the check valve ball 32
within the balloon. (Id. at [0040], [0049]; Harter Decl., Exhibit 1017 at 14.) When the self-sealing balloon is attached to a hollow tube for filling the balloon with water, the seating shoulder is removably attached to the hollow tube. (Harter Decl., Exhibit 1017 at 15.) The check valve ball cooperates with the elastic band such that when the balloon is filled with water and removed from the hollow tube, the seating shoulder pushes against the check valve ball to retain the check valve ball in a position that automatically seals the fluid passageway of the balloon. (Exhibit 1013 at [0040]; Harter Decl., Exhibit 1017 at 16.) d. U.S. Patent Application Publication No. 2005/0004430 ( Lee ) U.S. Patent Application Publication No. 2005/0004430 to Lee et al. (hereafter Lee ) also teaches a self-sealing balloon, i.e., a balloon that automatically seals when the balloon is detached from a fluid source. (Exhibit 1011 at FIGs. 1-7, [0033].) FIG. 1 of Lee is shown below ( IMAGE NO. 5 ). IMAGE NO. 5 As illustrated in IMAGE NO. 5, Lee teaches a system including a balloon (id. at FIG. 1, element 1) that is attached to a guide pipe (id. at element 3) by a rubber 33
band (id. at element 2). The rubber band has an elastic force that is capable of maintaining the balloon on the guide pipe when the balloon is expanded. (Id. at [0033].) After the balloon is expanded with a desired amount of fluid, a force is applied to the balloon and the rubber band in a direction towards the end of the guide pipe such that the balloon is released from the guide pipe and the rubber band automatically seals the balloon. (Id. at FIGs. 6 & 7; [0033].) e. The ZORBZ Replicator The ZORBZ Replicator is a device created by Kendall Harter, which was disclosed to the public at least as early as August 19, 2014 via a YouTube video (https://www.youtube.com/watch?v=wcajj0kpv7c; Exhibit 1018, Exhibit 1012 at p. 1.) The ZORBZ Replicator allows individuals to fill multiple water balloons at one time. (Id. at p. 2.) The prototype of the ZORBZ Replicator shown in the August 19, 2014 YouTube video includes two Noodle Head sprinklers that are connected to one another and placed upside down in a housing. (Id. at 26.) An image of the prototype of the ZORBZ Replicator is shown below. ( IMAGE NO. 6. ) IMAGE NO. 6 34
(Id. at Exhibit B.) As shown in IMAGE NO. 6, the Noodlehead sprinklers are attached to an inlet for attaching to a fluid source, such as a hose. An image of the ZORBZ Replicator that was disclosed in the YouTube video of August 19, 2014 is reproduced below ( IMAGE NO. 7 ). IMAGE NO. 7 (Exhibit 1018, Exhibit 1012 at p. 2.) As shown in IMAGE NO. 7, the ZORBZ Replicator includes a housing that is attached to a fluid source (i.e., a hose) at one end and a plurality of flexible tubes extending from a second end. Each of the flexible tubes is removably attached to a water balloon. (Harter Decl., Exhibit 1017 at 27.) When the water balloons are filled to a desired size, the apparatus user can shake the housing to remove the water balloons, such that the shaking overcomes a connecting force and causes the balloons to detach from the hollow tubes and the balloons automatically seal. 35
(Exhibit 1012 at p. 3.) The image below of the ZORBZ Replicator shows the user shaking the housing to remove the water balloons from the flexible tubes ( IMAGE NO. 8 ). IMAGE NO. 8 (Id.) The water balloons attached to the ZORBZ Replicator are self-sealing. (Harter Decl., Exhibit 1017 at 27, Exhibit B.) IMAGE NO. 8 shows the selfsealing water balloons immediately after they are filled to a desired size and removed from the ZORBZ Replicator. f. U.S. Patent No. 8,479,776 ( Berardi ) U.S. Patent No. 8,479,776 to Berardi (hereafter Berardi ) also teaches an invention in the field of hose attachment apparatuses. (Exhibit 1014.) An annotated figure from Berardi is shown below ( IMAGE NO. 9 ). 36
IMAGE NO. 9 As shown in IMAGE NO. 9, Berardi discloses a garden hose (FIG. 9, element 13), which is configured to attach to a fluid source (FIG. 9, element 23) at one end and a valve (FIG. 9, element 21) at its opposite end. The valve includes a threaded end for attachment to a hose attachment apparatus and an on/off lever, which controls the flow of the water out of the hose attachment apparatus. (See, e.g., Exhibit 1014 at FIGS. 8 and 9; Col. 7, lines 48-52.) ii. It Is More Likely Than Not That Claims 1-4, 8 and 14 are Unpatentable Under 35 U.S.C. 103 As Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) There is nothing new and/or non-obvious about the combination of elements set forth in independent claim 1 and claims 2-4, and 8 depending therefrom. Independent claim 1 is simply directed to an apparatus having a housing, a plurality of flexible tubes, a plurality of containers, and a plurality of elastic fasteners that 37
automatically seal the plurality of containers. As will be apparent from the claim chart and detailed description below, this combination of elements was well-known to those skilled in the art before the effective filing date of the 066 Patent. Accordingly, it is more likely than not that claims 1, 2-4 and 8 of the 066 Patent are unpatentable. CLAIM ELEMENT SPECIFIC PORTIONS OF THE EXHIBITS THAT SUPPORT THE CHALLENGE 1. An apparatus comprising: Exhibit 1009, FIG. 4 1.1 a housing comprising an opening at a first end and 1.2 a plurality of holes extending through a common face of the housing at a second end 1.3 a plurality of flexible hollow tubes 1.4 each hollow tube attached to the housing at a respective one of the holes at the second end of the housing 1.2 1.5 a plurality of containers Exhibit 1009 in view of Exhibit 1010 at FIG. 1, element 10; [0024]; Saggio Decl., Exhibit 1016 at 60-70. 1.1 1.3, 1.4 1.6 each container removably attached to a respective one of the hollow tubes; and 1.7 a plurality of elastic fasteners Exhibit 1009 in view of Exhibit 1010 at [0024]; Saggio Decl., Exhibit 1016 at 35. Exhibit 1009 in view of Exhibit 1010 at FIG. 5, element 18, [0017]; Saggio Decl., Exhibit 1016 at 37-39, 41. 38
1.8 each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube 1.9 and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, 1.10 and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube 1.11 such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connective force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers 1.12 wherein the apparatus is configured to fill the containers substantially simultaneously. 2. The apparatus of claim 1, the first end of the housing has an outermost perimeter that is smaller in length than an outermost perimeter of the second end. Petition for Post-Grant Review Exhibit 1009 in view of Exhibit 1010 at FIG. 5, element 18, FIG. 7, [0024]; Saggio Decl., Exhibit 1016 at 39. Exhibit 1009 in view of Exhibit 1010 at FIG. 5, element 18; Kamrin Decl., Exhibit 1015 at 71-80. Exhibit 1009 in view of Exhibit 1010 at [0019]; Saggio Decl., Exhibit 1016 at 41. Exhibit 1009 in view of Exhibit 1010; Kamrin Decl., Exhibit 1015 at 80-95. Exhibit 1009 at Col. 2, lines 50-55. Exhibit 1009 at FIG. 1, FIG. 4 Compare 1.1 with 1.2. 39
3. The apparatus of Claim 1, wherein the opening at the first end of the housing has a threaded inner surface. 4. The apparatus of Claim 1, wherein each container comprises an expandable balloon portion. 8. The apparatus of Claim 1, wherein the fluid comprises one or more of water, air and helium. 14. The apparatus of claim 1, wherein each hole at the second end of the housing extends through an outer surface of the housing, the outer surface opposing the opening at the first end of the housing. Petition for Post-Grant Review Exhibit 1009 at FIG. 4 See 1.1 above. Exhibit 1009 in view of Exhibit 1010 at FIG. 2, element 12, [0017]. Exhibit 1009 at Col. 2, line 24. Exhibit 1009 at FIG. 1, FIG. 4 See 1.1 and 1.2 above a. Independent Claim 1 As set forth in the claim chart above, independent claim 1 is obvious over Cooper in view of Saggio. Independent claim 1 recites an apparatus comprising a housing comprising an opening at a first end and a plurality of holes extending through a common face of the housing at a second end. (Exhibit 1001 at Col. 6, lines 31-33.) Cooper discloses an apparatus comprising a housing. (Exhibit 1009 at FIG. 1, element 11.) As shown in FIG. 4 of Cooper in the claim chart above, one end of the housing has an opening in the form of an inlet, having a conventional 40
turnable knurled female connector nut. (Id. at FIG. 4, elements 15, 16; Col. 2, lines 24-28.) The second end of the housing includes a top wall, i.e. a common face, having a plurality of holes. (Id. at FIG. 3, element 12; Col. 2, lines 20-23.) FIG. 1, reproduced below, of Cooper illustrates a plan view of the apparatus and further illustrates the first and second ends of the housing ( IMAGE NO. 10 ). IMAGE NO. 10 Claim 1 further recites that the apparatus comprises a plurality of flexible hollow tubes, each hollow tube attached to the housing at a respective one of the holes at the second end of the housing. (Exhibit 1001 at Col. 6, lines 34-36.) As illustrated in IMAGE NO. 2 above, Cooper teaches that flexible tube assemblies are attached to corresponding holes in the top wall of the housing. (Id. at FIG. 4, element 18, Col. 2, lines 33-35.) Each of the tube assemblies includes a flexible tube. (Id. at FIG. 4, element 20.) A restrictor plate (id. at FIG. 2, element 27) attaches a bottom flange (id. at FIG. 2, element 31) of each flexible tube (id. at FIG. 2, element 20) to 41
a corresponding hole in the top wall (id. at FIG. 2, element 12) of the housing (id. at FIG. 2, element 11). Claim 1 further recites a plurality of containers, each container removably attached to a respective one of the hollow tubes. (Exhibit 1001 at Col. 6, lines 37-38.) Cooper is silent as to this element. Saggio, like Cooper, discloses a housing having a plurality of hollow tubes. (Exhibit 1010 at FIG. 7, elements 28 and 36; [0022]-[0023].) Saggio additionally discloses a plurality of water balloons, i.e., containers that are removably attached to a respective one of the hollow tubes. (Id. at FIG. 1, element 10, [0024].) It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the 066 Patent to removably attach the balloons of Saggio to the flexible tubes of Cooper. (Saggio Decl., Exhibit 1016 at 60-70.) As shown in IMAGE NOs. 2 and 6 above (and reproduced below), each of Cooper and Saggio disclose a hose attachment apparatus containing a plurality of hollow tubes. (Id. at 64.) 42
Cooper, Exhibit 1002 Saggio, Exhibit 1003 It is well-known to those skilled in the art prior to the effective filing date of the 066 Patent that balloons are filled upon attachment to water dispensing devices, including without limitation hoses and devices that are attached to the ends of hoses. (Saggio Decl., Exhibit 1016 at 65.) One skilled in the art prior to the effective filing date of the 066 Patent would have been aware of the desire for an apparatus that can fill multiple water balloons at one time. (Exhibit 1010 at [0003]-[0004]; Saggio Decl., Exhibit 1016 at 66.) This is especially true, because the Saggio reference which discloses such an apparatus published over one year prior to the effective filing date of the 066 Patent. (See Exhibit 1010.) In designing an apparatus that can fill multiple water balloons at one time, one skilled in the art prior to the effective filing date of the 066 Patent would have thought to place water balloons at the end of a hose attachment apparatus that has multiple hollow tubes 43
and dispenses water. (Saggio Decl., Exhibit 1016 at 68.) Indeed, Kendall Harter, the inventor of the ZORBZ Replicator, did just that when he created the apparatus shown in the YouTube video published August 19, 2014. (Harter Decl., Exhibit 1017 at 24-27; Exhibit 1018, Exhibit 1012.) That is, when Harter created the ZORBZ Replicator he removably attached water balloons to the ends of the flexible hollow tubes of the Noodlehead sprinkler, which is claimed in the Cooper reference. (Id.) Accordingly, it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent to modify Cooper with the teachings of Saggio to construct an apparatus that comprises a plurality of containers, each container removably attached to a respective one of the flexible hollow tubes. (Saggio Decl., Exhibit 1016 at 60-70.) Independent claim 1 additionally recites that the apparatus comprises a plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube. (Exhibit 1001 at Col. 6, lines 39-41.) Each of Saggio s water balloons include an elastic internal membrane, i.e. an elastic fastener. (Exhibit 1010 at FIG. 5, element 18, [0017].) When the water balloon is attached to a corresponding hollow tube of Cooper, the elastic internal membrane will press up against the hollow tube, clamping the balloon to the hollow tube. (Saggio Decl., Exhibit 1016 at 39.) 44
Independent claim 1 additionally recites that the elastic fastener is configured to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube. (Exhibit 1001 at Col. 6, lines 44-46.) Saggio discloses that the elastic internal membrane includes a closure member. (Id. at 41; Exhibit 1010 at FIG. 2, element 24.) After the compartment defined in IMAGE NO. 4 above is filled with a desired amount of fluid, the balloon is detached and fluid pressure on the closure member causes it to automatically seal the fluid within the compartment of the balloon. (Exhibit 1010 at [0021].) Independent claim 1 further recites that each elastic fastener [is] configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water. (Exhibit 1001 at Col. 6, lines 41-44.) As previously discussed in Section VII(A)(ii) above, Petitioner respectfully submits it is more likely than not that the term connecting force is non-enabling and indefinite because it is inconsistent with the basic laws of physics. However, for the purposes of this argument, Petitioner will interpret the term connecting force (Fconnecting) as used in the claims, as equal to the maximal force that the elastic fastener can assert on the hollow tube so that the container does not fall off the tube. (Kamrin Decl., Exhibit 1015 at 74.) As such, this functional limitation is directed to well-known laws of physics and does not impart patentabiliy on independent 45
claim 1. (Id. at 72.) Indeed, if the weight of the container exceeds the maximal force, the container will fall off the tube. (Id. at 74.) Below is a force diagram ( IMAGE NO. 11 ) showing that the elastic fastener of Saggio is configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water. Fup Fconnecting = μpa IMAGE NO. 11 (Id. at 85.) The maximal force that can hold the container on the flexible hollow tube is equal to the coefficient of friction (μ) times the average pressure of the container and elastic internal membrane in contact with the flexible hollow tube (P) times the area of the flexible hollow tube that is in contact with the balloon (A). (Id. at 75.) That is, Fconnecting = μpa 46
The actual force that is acting on the container as a result of the elastic fastener at any time is Fup. (Id. at 76.) That is, Fup Fconnecting = μpa The force of gravity (Fgravity), i.e., the mass of the fluid in the water balloon (Mfluid) times gravity (g), opposes the actual force acting on the container (Fup). (Id. at 77.) That is, Fgravity = (Mfluid)(g) In order for the container to fill with fluid, it must be attached to the hollow tube. (Id. at 78.) When the container is attached to the hollow tube with fluid therein, Fup = Fgravity = (Mfluid)(g) It was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that when the mass of the fluid in the balloon (Mfluid) times gravity (g) is greater than the connecting force (Fconnecting), the balloon will automatically detach from the flexible hollow tube. (Id. at 84.) It follows that when the mass of fluid in a balloon (Mfluid) times gravity (g) is less than or equal to the connecting force, the balloon will remain attached to the flexible hollow tube. (Id.) This is simply Newton s Second Law that has been known to those skilled in the art since the 1600s. (Id.) Malone did not invent this basic law of physics. (Id.) Accordingly, Cooper in view of Saggio teach an elastic fastener that is configured to provide a 47
connecting force that is not less than a weight of one of the containers when substantially filled with water. Independent claim 1 further recites that the apparatus is configured such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers. (Exhibit 1001 at Col. 6, lines 46-51.) This functional limitation is also attempting to claim Newton s Second Law of physics. Below is a force diagram ( IMAGE NO. 12 ) showing the forces acting on Saggio s balloon when the hollow tubes are shaken in a state in which the balloons are substantially filled with water, which overcomes the connecting force and causes the balloons to detach from the hollow tubes. Fup Fconnecting = μpa IMAGE NO. 12 48
(Id. at 86.) Petition for Post-Grant Review It was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that in order to detach the balloon from the flexible hollow tubes an individual can (1) increase the mass of the fluid in the balloon until the balloon falls off; or (2) increase the effective value of gravity. (Id. at 81.) Moreover, it was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that one can change the effective value of the gravitational weight of an object by accelerating the object. (Id. at 82.) That is, the effective value of gravity (geffective) = gravity (g) acceleration (a). (Id.) When a downward moving object is slowed down or an upward moving object is sped up, a negative acceleration is created. (Id. at 83.) For example, the effective value of gravity (geffective) = gravity (g) -acceleration (-a) = gravity (g) + acceleration (a). (Id.) It was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that shaking an object involves a downward motion and an upward motion, and that change of motion from downward to upward constitutes a negative acceleration, thereby increasing the effective value of gravity. (Id. at 84.) Accordingly, it was wellknown to those skilled in the art prior to the effective filing date of the 066 Patent that if after substantially filling a balloon with fluid, the balloon remains on the hollow tube, one can remove the balloon from the tube by shaking the tube in order to increase the effective value of gravity and detach the balloon from the tube. 49
Therefore, Cooper in view of Saggio teaches an apparatus that is configured such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers. The final limitation of independent claim 1 recites that the apparatus is configured to fill the containers substantially simultaneously. (Exhibit 1001 at Col. 6, lines 52-53.) Cooper discloses that when the apparatus is attached to a garden hose, water flows through each of the tubes. (Exhibit 1009 at Col. 2, lines 20-28, 50-58.) Accordingly, Cooper in view of Saggio teaches an apparatus that is configured to fill the containers substantially simultaneously. In view of the foregoing remarks, it is more likely than not that independent claim 1 is unpatentable over Cooper in view of Saggio. b. Claims 2 and 14 Claim 2 depends from claim 1 and recites the first end of the housing has an outermost perimeter that is smaller in length than an outermost perimeter of the second end. (Exhibit 1001 at Col. 6, lines 54-56.) As illustrated in IMAGE NO. 10 above, Cooper teaches that the first end of the house has an outermost perimeter that is smaller in length than an outermost perimeter of the second end. 50
Claim 14 depends from claim 1 and recites each hole at the second end of the housing extends through an outer surface of the housing, the outer surface opposing the opening at the first end of the housing. (Id. at Col. 7, lines 27-30.) As illustrated in IMAGE NO. 10 above, the outer surface (Exhibit 1009 at FIG. 1, element 12) is at one end of the housing and the opening (id. at FIG. 1, element 16) is at the opposing end of the housing. IMAGE NO. 2 above further illustrates that each hole at the second end of the housing extends through the outer surface (id. at FIG. 1, element 12). c. Claim 3 Claim 3 depends from claim 1 and recites the opening at the first end of the housing has a threaded inner surface. (Exhibit 1001 at Col. 6, lines 57-58.) Cooper discloses that the opening at the first end of the housing has a conventional turnable knurled connector nut. (Exhibit 1009, Col. 2, lines 23-28.) Moreover, IMAGE NO. 2 above illustrates that the connector nut has a threaded inner surface. (Id. at FIG. 4, element 16.) d. Claim 4 Claim 4 depends from claim 1 and recites each container comprises an expandable balloon portion. (Exhibit 1001 at Col. 6, lines 59-60.) Saggio teaches that each container is a water balloon made of elastic materials standard in balloon manufacture. (Exhibit 1010 at FIGS. 1, 2, and 5; [0017].) 51
e. Claim 8 Petition for Post-Grant Review Claim 8 depends from claim 1 and recites the fluid comprises one or more of water, air and helium. (Exhibit 1001 at Col. 7, lines 5-6.) Cooper discloses that the apparatus is attached to a garden hose and a fluid in the form of water flows through each of its bendable, hollow tubes. (Exhibit 1009, Col. 1, lines 47-67.) iii. It Is More Likely Than Not That Claims 11-13 are Unpatentable Under 35 U.S.C. 103 as Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and Further In View of U.S. Patent No. 8,479,776 ( Berardi ) Claims 11-13 are directed to a valve that attached to the housing of independent claim 1. As will be apparent from the detailed description below, this combination of elements was well-known to those skilled in the art before the effective filing date of the 066 Patent. Accordingly, it is more likely than not that claims 11-13 of the 066 Patent are unpatentable. Claim 11 depends on claim 1 and recites the housing is attached to a valve coupled to a fluid source, wherein the valve is configured to control delivery of the fluid to fill the plurality of containers. (Exhibit 1001 at Col. 7, lines 15-18.) Claim 12 depends on claim 11 and further recites the valve includes a lever that can be turned to a first position to turn on the valve and allow fluid flow to the housing, wherein the lever can be turned to a second position to turn off the valve and stop fluid flow to the housing. (Id. at Col. 7, lines 19-23.) Claim 13 also depends from 52
claim 11 and recites one end of the valve is connected to a hose attached to a water supply, and the other end is threaded to the housing. (Id. at Col. 7, lines 24-26.) Cooper in view of Saggio is silent as to a valve that includes a lever and is connected to both the housing and a hose. Berardi discloses a valve having such features. As shown in IMAGE NO. 9 above, Berardi discloses a valve. (Exhibit 1014 at FIG. 9, element 21.) One end of the valve is connected to a hose (id. at elements 12, 13.) that is attached to a water supply (id. at element 23.). The other end of the valve is threaded to a housing. (Id. at FIG. 8, element 21, FIG. 9, element 25.) The valve additionally includes a lever that is configured to turn to a first position to turn on the valve and allow fluid flow to the housing, and configured to turn to a second position to turn off the valve and stop fluid flow to the housing. (See IMAGE NO. 9, Exhibit 1014 at Col. 7, lines 48-52.) It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the 066 Patent to attach the housing of Cooper to a valve that is coupled to a fluid source and has a lever for turning on and off the valve. (Saggio Decl., Exhibit 1016 at 112.) Cooper teaches that the housing, has a conventional knurled female connector nut which may be attached to a garden hose. (Id. at 113; Exhibit 1009 at Col. 2, lines 23-28.) Cooper additionally discloses that the housing includes a restrictor plate for controlling water flow rates and acknowledges that alternate means may be used to cause different water flow rates. (Exhibit 53
1009 at FIG. 2, element 27, Col. 2, lines 59-60; Saggio Decl., Exhibit 1016 at 114.) It was well-known to one of ordinary skill in the art prior to the effective filing date of the 066 Patent that a valve was a means for controlling water flow. (Saggio Decl., Exhibit 1016 at 116.) Indeed, Saggio even discloses a hose attachment apparatus for filling multiple water balloons at one time that includes a valve. (Exhibit 1010 at FIG. 7, element 38; Saggio Decl., Exhibit 1016 at 116.) Accordingly, it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent to modify the housing taught by Cooper by attaching the valve taught by Berardi, which is coupled to a fluid source, configured to control delivery of the fluid to fill the plurality of containers, and has a lever that can be turned to a first position to turn on the valve and allow fluid flow to the housing, and can be turned to a second position to turn off the valve and stop fluid flow to the housing. (Saggio Decl., Exhibit 1016 at 116.) iv. It Is More Likely Than Not That Claims 1-4, 7-9, and 14 are Unpatentable Under 35 U.S.C. 103 As Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and U.S. Patent Application Publication No. 2005/0004430 ( Lee ) Petitioner maintains that it is more likely than not that claims 1-4, 8, and 14 are unpatentable under 35 U.S.C. 103 over Cooper in view of Saggio. Particularly, Petitioner respectfully submits that the elastic internal membrane of Saggio (Exhibit 1010 at FIG. 5, element 18) discussed in Section VII(B)(ii)(a) above, is an elastic 54
fastener in accordance with Petitioner s construction of the term. However, if the Board declines to adopt Petitioner s construction of the term elastic fastener and/or does not find that the elastic internal membrane of Saggio is an elastic fastener, Petitioner submits the following alternative grounds of invalidity: the elastic fastener is disclosed in Lee. a. Independent Claim 1 As set forth in Section VII(B)(ii)(a) above, Cooper discloses an apparatus comprising a housing comprising an opening at a first end an a plurality of holes extending through a common face of the housing at a second end and a plurality of flexible hollow tubes, each hollow tube attached to the housing at a respective one of the holes at the second end of the housing. Additionally, for the reasons set forth in Section VII(B)(ii)(a) above it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent to modify Cooper with Saggio such that the apparatus comprises a plurality of containers, each container removably attached to a respective one of the hollow tubes. As previously discussed, independent claim 1 recites that the apparatus comprises a plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube, (Exhibit 1001 at Col. 6, lines 39-41), and the elastic fastener is configured to automatically seal its respective one of the plurality of containers upon detaching the container from its 55
corresponding hollow tube. (Exhibit 1001 at Col. 6, lines 44-46.) If the Board declines to adopt Petitioner s construction of the term elastic fastener and/or does not find that the elastic internal membrane of Saggio is an elastic fastener, for the following reasons, Petitioner respectfully submits that it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent to modify Cooper in view of Saggio with the elastic fastener taught in Lee. Saggio explains that one problem known to those skilled in the art prior to the effective filing date of the 066 Patent was the need for a water balloon that does not require tying. (Exhibit 1010 at [0004].) Attempting to solve this problem, Saggio teaches a balloon with an elastic internal membrane therein that is configured to seal a fluid within the balloon. (Id. at [0019].) Lee teaches another means for sealing a fluid within a balloon. More particularly, Lee teaches an expandable balloon (Exhibit 1011, FIG. 1, element 1) that is clamped to a hollow tube (id. at element 3) via a rubber band, i.e., an elastic fastener. (Id. at element 2; [0033].) The rubber band is configured to automatically seal a fluid in the balloon when the balloon is released from the hollow tube. (Id. at [0033].) It was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that a rubber band was capable of sealing a fluid within a balloon. (Saggio Decl., Exhibit 1016 at 75.) Moreover, the rubber band is functionally equivalent to the elastic internal membrane of Saggio, because both 56
objects are used to seal a fluid in a balloon when the balloon is detached from a hollow tube. (Id. at 76.) Additionally, while Lee teaches a system for use in treating obesity, Lee is analogous art to Saggio because both Saggio and Lee teach mechanisms for automatically sealing a balloon when a balloon is filled with fluid and detached from a hollow tube. (Id. at 77.) Accordingly, it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent to modify Cooper in view of Saggio by using the rubber band of Lee to clamp the containers on to corresponding hollow tubes and automatically seal the containers upon detaining the container from its corresponding hollow tube. (Id. at 78.) Independent claim 1 further recites that the elastic fastener is configured to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube. (Exhibit 1001 at Col. 6, lines 44-46.) Lee teaches that the rubber band automatically seals the balloon when the balloon detaches from the hollow tube. (Exhibit 1011 at [0033].) Accordingly, Cooper in view of Saggio and Lee teach an elastic fastener that is configured to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube. Independent claim 1 additionally recites that each elastic fastener [is] configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water and that the apparatus is configured 57
such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers. (Exhibit 1001 at Col. 6, lines 41-51.). As previously stated in Section VII(B)(ii)(a) above, these functional limitations are simply Newton s Second Law of physics and do not impart patententability on independent claim 1. (Kamrin Decl., Exhibit 1015 at 72-91.) Indeed, it is well-known to those skilled in the art that the type of elastic fastener does not affect the obviousness of independent claim 1 of the 066 Patent. (Id. at 93.) That is, the well-known principles of physics remain the same regardless of whether the elastic fastener is the elastic internal mebrane taught by Saggio or the rubber band taught by Lee. It was known to those skilled in the art prior to the effective filing date of the 066 Patent that a different elastic fastener may produce a difference average pressure (P) and thus produce a different maximal force, i.e., connecting force. (Id. at 94.) However, it was known to those skilled in the art prior to the effective filing date of the 066 Patent that the connecting force of any elastic fastener can be overcome when the mass of the fluid in the balloon times gravity is greater than to the connecting force. (Id.) Accordingly, when the mass of a substantially filled 58
balloon time gravity is not greater than the connecting force, the balloon and the elastic fastener will remain on the tube. (Id.) Additionally, it remains true that when the balloons are substantially filled with a mass of fluid and balloon remain connected to the tubes, one can remove the balloons from the hollow tubes by shaking the hollow tubes, which increases the effective value of gravity and can overcome the upward force. (Id. at 95.) Accordingly, it would have been obvious to one skilled in the art prior to the effective filing date of the 066 Patent that Cooper in view of Saggio and Lee teach an apparatus having a plurality of elastic fasteners with teach elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water and that the apparatus is configured such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers. The final limitation of independent claim 1 recites, the apparatus is configured to fill the containers substantially simultaneously. (Exhibit 1001 at Col. 6, lines 52-53.) Cooper discloses that when the apparatus is attached to a garden hose, water flows through each of the tubes. (Exhibit 1009 at Col. 2, lines 20-28, 59
50-58.) Accordingly, Cooper in view of Saggio and Lee teach an apparatus that is configured to fill the containers substantially simultaneously. Therefore, it is more likely than not that independent claim 1 of the 066 Patent is unpatentable over Cooper in view of Saggio and Lee. b. Claims 2-4, 8 and 14 For the reasons set forth in Sections VII(B)(ii)(b)-(e) above, it is more likely than not that claims 2-4, 8, and 14 are unpatentable over Cooper in view of Saggio and Lee. c. Claim 7 Claim 7 depends from claim 1 and recites the clamp 2 is disposed outwardly from the container and clamps an inner surface of the container against an outer surface of the respective one of the plurality of tubes. (Exhibit 1001 at Col. 7, lines 1-4.) FIG. 3 of Lee teaches that the rubber band (Exhibit 1011, FIG. 3, element 2) is disposed on an outer surface of the balloon (id. at FIG. 3, element 1) and clamps the inner surface of the balloon to an outer surface of the inner guide pipe (id. at FIG. 3, element 3), i.e., hollow tube. (Id. at [0033].) 2 Petitioner respectfully submits that, in accordance with Section VII(A)(ii) above, claims 7 and 9 are indefinite because there is no antecedent basis for the clamp, and the term is not defined in the 066 Patent s specification. However, if the Board disagrees, for the purpose of this argument, Petitioner assumes that clamp means elastic fastener. 60
d. Claim 9 Petition for Post-Grant Review Claim 9 depends from claim 1 and recites each clamp comprises an O-ring configured to automatically seal the container in response to a force applied to the container in a direction away from the housing. (Exhibit 1001 at Col. 7, lines 7-10.) As previously discussed, Lee teaches an elastic fastener in the form of a rubber band. (Exhibit 1011 at FIG. 5, element 2, [0033].) FIG. 5 of Lee, which is depicted below, illustrates that the rubber band is an O-ring ( IMAGE NO. 13 ). O-Ring Balloon Hollow Tube IMAGE NO. 13 As previously discussed in connection with independent claim 1 above, it was well-known to those skilled in the art prior to the effective filing date of the 066 Patent that shaking an object involves a downward motion and an upward motion, and that change of motion from downward to upward constitutes a negative acceleration, thereby increasing the effective value of gravity. (Kamrin Decl., Exhibit 1015 at 89.) Moreover, as previously discussed, it is a well-known principle of physics that increasing the effective value of gravity can detach the 61
balloons from the hollow tubes. (Id. at 90.) Furthermore, as previously discussed, Lee teaches that the rubber band automatically seals the balloon when the balloon is detached from the hollow tube. (Exhibit 1011 at [0033].) Accordingly, Cooper in view of Saggio and Lee disclose and apparatus where each clamp comprises an O- ring configured to automatically seal the container in response to a force applied to the container in a direction away from the housing. v. It Is More Likely Than Not That Claims 11-13 are Unpatentable Under 35 U.S.C. 103 as Obvious Over U.S. Patent No. 5,826,803 ( Cooper ) In View Of U.S. Patent Application Publication No. 2013/0118640 ( Saggio ) and U.S. Patent Application Publication No. 2005/004430 ( Lee ) and Further In View of U.S. Patent No. 8,479,776 ( Berardi ) For the reasons set forth in Section VII(B)(iii) above, it is more likely than not that claims 11-13 are unpatentable over Cooper in view of Saggio and Lee and further in view of Berardi. vi. It Is More Likely Than Not That Claims 1-4, 8, and 14 are Unpatentable Under 35 U.S.C. 103 as Obvious over the ZORBZ Replicator in view of (1) WIPO Publication No. WO 2015/027187 ( Harter ); (2) U.S. Patent Application Publication No. 2013/018640 ( Saggio ); or (3) U.S. Patent Application Publication No. 2005/0004430 ( Lee ) It is more likely than not that independent claim 1 of the 066 Patent and claims 2-4, 8 and 14 depending therefrom are unpatentable under 35 U.S.C. 103 as obvious under over the ZORBZ Replicator in view of (1) Harter; (2) Saggio; or (3) Lee. The ZORBZ Replicator was made available to the public in a YouTube 62
video on the Internet at least as early as August 19, 2014 over one month before the effective filing date of the 066 Patent. (Exhibit 1012 at p. 1.) The ZORBZ Replicator is a device for filling multiple self-sealing water balloons at one time. (Id.) Harter, Saggio, and Lee also disclose self-sealing balloons. (See Exhibits 1010, 1011, and 1013.) As will be apparent from the claim chart and the detailed description below, it is more likely than not that claims 1-4, 8, and 14 of the 066 Patent are unpatentable because the combination of the ZORBZ Replicator in view of the self-sealing mechanism of Harter, Saggio, or Lee discloses each and every limitation of those claims and was well-known to those skilled in the art prior to the effective filing date of the 066 Patent. CLAIM ELEMENT 1. An apparatus comprising: 1.1 a housing comprising an opening at a first end and 1.2 a plurality of holes extending through a common face of the housing at a second end 1.3 a plurality of flexible hollow tubes 1.4 each hollow tube attached to the housing at a respective one of the holes at the second end of the housing 1.5 a plurality of containers SPECIFIC PORTIONS OF THE EXHIBITS THAT SUPPORT THE CHALLENGE 1.2 Exhibit 1017 at 24-27, Exhibit B. 63
1.6 each container removably attached to a respective one of the hollow tubes; and Petition for Post-Grant Review 1.7 a plurality of elastic fasteners 1.8 each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube 1.9 and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, 1.10 and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube 1.11 such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connective force and causes the containers to detach from the hollow tubes thereby causing Exhibit 1018 in view of (1) Exhibit 1013 at FIGS. 1 & 2, element 112, [0040], [0049]; (2) Exhibit 1010 at FIG. 5, element 18; or (3) Exhibit 1011 at FIG. 1, element 1. Exhibit 1018 in view of (1) Exhibit 1013 at FIGs. 1 & 2, element 112, [0040], [0049]; (2) Exhibit 1010 at FIG. 5, element 18; or (3) Exhibit 1011 at FIG. 1, element 1. Exhibit 1018 in view of (1) Exhibit 1013 at FIGs. 1 & 2, element 112, [0040], [0049]; (2) Exhibit 1010 at FIG. 5, element 18; or (3) Exhibit 1011 at FIG. 1, element 1; Kamrin Decl., Exhibit 1015 at 72-85. See 1.6 above See 1.6 above. Exhibit 1018 in view of (1) Exhibit 1013 at FIGs. 1 & 2, element 112, [0040], [0049]; (2) Exhibit 1010 at FIG. 5, element 18; or (3) Exhibit 1011 at FIG. 1, element 1; Kamrin Decl., Exhibit 1015 at 86-91. 64
the elastic fasteners to automatically seal the containers 1.12 wherein the apparatus is configured to fill the containers substantially simultaneously. 2. The apparatus of claim 1, the first end of the housing has an outermost perimeter that is smaller in length than an outermost perimeter of the second end. See 1.0 above. Petition for Post-Grant Review 3. The apparatus of Claim 1, wherein the opening at the first end of the housing has a threaded inner surface. 4. The apparatus of Claim 1, wherein each container comprises an expandable balloon portion. See 1.1 above. See 1.5 above. 8. The apparatus of Claim 1, wherein the fluid comprises one or more of water, air and helium. 14. The apparatus of claim 1, wherein each hole at the second end of the housing extends through an outer surface of the housing, the See 1.0 above; Harter Decl., Exhibit 1017 at 24. See 1.1 and 1.2 above. 65