Many of us feel the daily pull toward coffee, and perhaps likewise toward PTAB decisions about coffee makers.
I found interesting a recent pair of IPR decisions successfully brought by the Swiss Nespresso against German competitor K-Fee. This post delves into these cases and what I call the 'glove doesn't fit' fallacy in patent law obviousness doctrine; it also provides a discussion of how written description continues to be a risk, even in inter partes review (IPR) proceedings.
- IPR2023-00502 (923 FWD)
- IPR2023-00485 (430 FWD)
Background: The challenged patents, US10994923 and US11230430 both relate to single-serve beverage capsules that have a barcode on the underside of the lip. The machines can read the barcode and then take special action such as adjusting the speed of water flow or brewing temperature. It might also refuse to brew expired or 'unauthorized' pods as well as track inventory. Both patents stem from a common lineage of applications, with claimed priority reaching back to German national applications filed in 2010 and 2011. However, the priority date became a contested issue in the IPRs.
Priority Date and Prior Art Status: A significant issue in the IPR2023-00485 was whether the '430 patent was entitled to the priority date of its 2010 German applications. This was important because one of the key references relied on in the petition (Jarisch) had a 2011 prior art date. The substantive test for priority claims follows the written description requirement. This means the priority document must demonstrate that the inventor had possession of the full invention (as ultimately claimed) at the time of the earlier filing. In other words, we compare those original German applications (individually) against the claim being challenged here.
The '430 patent claims a machine using the barcodes and also includes several other specific features: a particular base element shape; a barrier layer; a mandrel; a specific seal configuration; a pump control; etc. The problem is that the priority documents, although they may have collectively disclosed each of these elements, did not explain how they all operate at once within a coffee maker. It is not enough to simply provide a list of ingredients each separately disclosed in the priority documents. Rather, written description support requires that the application disclose the combination of all these features together as claimed.
Although a patent may not be challenged in an IPR for lack of written description, the issue regularly arises during IPRs in this context, where the written description requirement is used to reject weak priority claims. Typically, much more prior art becomes available once the patent is given a later effective filing date.
Here, the PTAB found that the German priority applications did not provide the needed level of disclosure for the full combination of claimed features. And, as a result, the claims were obvious.
Combination and Obviousness: I discussed above that, for written description, the patentee must provide more than a list of parts. On the obviousness side we have similar doctrine. A list of parts and functionality found in a variety of references does not render a claimed invention obvious — unless there is good reason provided for combining those together. Post-KSR, we generally frame these issues as motivation to combine and reasonable expectation of success. The typical question is whether someone of skill in the art have been motivated to combine the teaching of the asserted prior art references to create the claimed invention, and, in doing so, have a reasonable expectation that the combination would be a success?
For me, the most salient feature of IPR2023-00502 focuses on motivation to combine and the OJ Simpson "glove doesn't fit" argument that, in obviousness analysis, is known as bodily incorporation.
For this case, the patent claimed the disposable cup having certain features and with the barcode on the underside of the lip. The PTAB found that a first reference (Yoakim) disclosed most elements, including a barcode identifier, but did not specify placing the barcode on the underside of the capsule's flange. Jarisch, however, taught placing an identifier code "on the bottom of the rim of the capsule which is opposed to the lid of the capsule" because this location is "sufficiently away from the liquid injection and beverage delivery areas so that there is a lower risk for the code to become unreadable."
In the OJ trial, his lawyer delivered the famous and successful line: "if it doesn't fit, you must acquit." Similarly, patent attorneys often argue that if one reference's teachings can't be perfectly integrated into another reference's structure, the combination itself cannot be obvious — typically arguing no motivation to combine. In this case, the followed that approach and argued there was no motivation to combine because Yoakim's machine was structurally designed to have the top barcode reader and would require extensive modification to use Jarisch's underside barcode approach. Essentially, they were saying, "Jarisch's teachings don't fit perfectly into Yoakim's design, so you must find the patent non-obvious."
The PTAB rejected these arguments. Importantly, the Board emphasized that bodily incorporation is not required in an obviousness analysis. The PTAB quoted In re Mouttet: "It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." 686 F.3d 1322 (Fed. Cir. 2012); see also, In re Nievelt, 482 F.2d 965 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Rather, than 'bodily incorporation,' the combination approach is more about taking express inspiration from one disclosure and using that to modify another.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413 (C.C.P.A. 1981). Many patent attorneys, including myself at times, find this concept surprising and counterintuitive. Perhaps we are misunderstanding the fundamental nature of obviousness. The law asks whether the teachings of the references would have motivated a skilled artisan to arrive at the claimed invention, not whether the references could be physically combined without modification.
Testimony and Level of Ordinary Skill: Finally, I want to note here that the motivation to combine also largely turned on a battle of experts won by the petitioner. Petitioner's expert explained and justified why someone of skill in the art would have been motivated to combine the two key references.
On the other side, the patentee here appears to have made an error in hiring their technical expert. The Board gave Dr. Howle's testimony little weight after concluding that she lacked the minimum qualifications of an ordinarily skilled artisan in the relevant field, particularly the required "five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier." That left the other side's expert testimony effectively unrebutted.
Of course, the patentee hired their expert and provided the testimony before the level of skill was settled, but a conservative practice for a patentee would likely ensure that any expert you provide meets the level of skill suggested in the opening petition.
I believe that K-fee has some potential good appellate arguments and we'll cover them as they develop.
Both IPR decisions were before PTAB Judges Obermann, Tornquist, and Mayberry.
Petitioner was represented by Barry (Clayton) McCraw and Amanda Bonner of Mayer Brown along with Shantelle Lafayette. The patent owner was represented by Michael Chu, Douglas Carsten, and Ian Brooks from McDermott along with Scott (Ben) Pleune from Alston & Bird along with Eric Dobrusin and Paul Palinski from the Dobrusin firm. It appears that Palinski was the lead attorney prosecuting the most recent continuation that – with a Track-1 launch – received a notice of allowance less than 5 months after filing.
The parties have two parallel court proceedings ongoing: K-fee System GmbH v. Nespresso USA, Inc. et al, Docket No. 2:21-cv-03402; and Nespresso USA, Inc. v. K-fee System GmbH, Docket No. 2:22-cv-09295; and K-fee System GmbH v. Nespresso USA, Inc., CV 22-525-GW-AGRx. All three cases have been consolidated before Judge George Wu in the Central District of California. Based upon the motion to consolidate, the three cases involve a total of eleven K-fee patents — all from the same patent family and all related to single-use coffee capsules.
In the litigation, there is some overlap with the IPR attorneys. Patentee K-fee is represented by Douglas Carsten, Ian Brooks, Joshua Revilla, Katherine Pappas, and Kavya Rallabhandi from McDermott Will and Emery. The case lists a set of terminated attorneys from three additional firms. The defendant, Nespresso is represented by a host of Gibson Dunn attorneys, including Wayne Barsky, Andrew Blythe, Christine Ranney, Darish Huynh, Mark N. Reiter, Wendy W. Cai, and Yu-Chieh Ernest Hsin.
Originally published by Patently-O
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