United States: Court Grants Summary Judgment Of Non-Infringement In K-Cup Patent Suit

Keurig, Inc. v. JBR, Inc., C.A. No. 11-11941-FDS, 2013 WL 2304171 (D. Mass. May 24, 2013) (Saylor, D.J.) [Summary Judgment of Non-Infringement]

Plaintiff Keurig, Inc. ("Keurig") filed suit contending that the coffee cartridges of Defendant JBR, Inc. ("JBR") infringed upon Keurig's three patents. The three patents are: (1) U.S. Patent No. D502,362 (the "'D362 patent"), a design patent directed to a disposable beverage filter cartridge, (2) U.S. Patent No. 7,347,138 (the " '138 patent"), a utility patent directed to an apparatus for brewing a single cup of coffee using a removable beverage cartridge, and (3) U.S. Patent No. 7,165,488 (the "'488 patent"), a utility patent directed to a method for use of the same apparatus. JBR moved for summary judgment of non-infringement on all three patents. For the reasons outlined below, the District Court (Saylor, D. J.) granted summary judgment confirming non-infringement of the 'D362 patent, the '138 patent, and the '488 patent.

The 'D362 Design Patent

Because the 'D362 patent is a design patent, the Court applied the "ordinary observer" test. Under that test, infringement occurs "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives," an interested purchaser would find the two designs substantially the same and be induced to purchase a product believing it to be the commercial embodiment of the patented design. Gorham v. White, 81 U.S. 511 (1872). The Court also stated that the proper application of the test was the comparison of the JBR cartridge to the 'D362 patent, as opposed to the 'D362 patent's commercial embodiment.

In the context of pre-trial motions, infringement of a design patent requires two levels of analysis: (1) a threshold analysis to determine whether or not a prior art comparison is even necessary and (2), if necessary, a prior art comparison. For the threshold analysis, a prior art comparison will be deemed necessary if "the claimed and accused designs are not plainly dissimilar." This analysis requires the Court to compare the designs "side-by-side" and determine whether reasonable jurors could differ as to the designs being "plainly dissimilar." Although the threshold inquiry is highly fact-dependent, courts have found designs "plainly dissimilar" as a matter of law.

In this case, JBR urged the Court to disregard the similarities between the claimed design and JBR's cartridge because JBR regarded those similar features to be functional. The Court determined the main features of the design patent to be the lid's circular shape, the filter's overall tapered shape, and the depending skirt. The Court found the circular lid and the depending skirt to be ornamental, but the filter's tapered shape to be functional because the tapered shape "affects the quality of the beverage cartridge." However, the Court believed that the specific shape of the filter was still an appropriate factor to be used in the comparison of the designs.

With regard to the protected design features, the Court compared the overall designs as required by the "ordinary observer" test. The Court found that the filter dominated the overall appearance of both designs. To the Court, the filters appeared to be dissimilar as the JBR filter is "more or less hemispherical" while the filter in the 'D362 patent is like a "triangular prism." Thus, the JBR filter is not as long as the patented design and generally wider. The Court concluded that an ordinary observer would not be deceived into believing that the JBR coffee cartridge and the patented design are "one and the same." Because the Court concluded that the product and the patented design are plainly dissimilar, there was no need for a prior art comparison.

The'138 Patent and the '488 Patent Analysis

Keurig also claimed that JBR indirectly infringed two of its utility patents. But JBR contended that Keurig could not claim patent infringement because of the doctrine of patent exhaustion. Under that doctrine, patent rights are exhausted after the initial authorized sale of a patented product. Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008).

The Court held that the doctrine of patent exhaustion applies to the apparatus claims in the '138 patent. The doctrine "prevent[s] a patent holder from controlling the use of a claimed apparatus after its sale." Moreover, the doctrine applies to licensing schemes where a patent holder "sells, or licenses another to sell, a combination of products that together form the apparatus claimed in the patent." Keurig is such a patent holder. Due to the sale and license of the Keurig brewers, Keurig has exhausted its patent rights. Thus, the Court found no direct infringement on the part of the consumers, and, as a result, no indirect infringement on the part of JBR.

The doctrine was found to bar infringement of the method claims of the '488 patent as well. The sale of an item made by a patented method also exhausts the rights of its patent owner. The Court disagreed with Keurig's argument that the proper test is a two-part "substantial embodiment" test. The Court reasoned that the "substantial embodiment" test is for incomplete items, and here, the item is complete. The Court conceded that a Keurig brewer must be combined with a cartridge to practice the method claims of the '488 patent. However, the Court noted that such a step is anticipated to be done by the consumer after the sale. Moreover, the brewer can function without the addition of the cartridge. Therefore, the Court found that the Keurig brewers are "complete" items because they are intended for sale without needing additional manufacturing processes or component parts. There is no direct infringement of the method claims by consumers and, as a result, no indirect infringement of those claims by JBR.

JBR also contended that the doctrine of permissible repair allowed consumers to replace cartridges with new cartridges not made by Keurig. Keurig argued that patent exhaustion was a requirement to assert the defense. The Court found that this defense was permissible because Keurig had exhausted its rights.

Originally published October 8, 2013.

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