Docket No. 2016-1841
REYNA, LINN, CHEN
May 23, 2017
Brief Summary: ITC decision of no § 337 violation because the asserted claims to a beverage brewer are invalid for lack of written description affirmed.
Summary: Rivera appealed ITC holding that all asserted claims of US 8,720,320 directed to “Pod Adaptor System for Single Service Beverge Brewers” invalid for lack of written description. The ‘320 patent identified “a need for brewers configured for cup-shaped cartridges” as used in Keurig® machines to “also be used to brew beverages from pods” and claimed a “beverage brewer, comprising: a brewing chamber”, a particular type of “container”, and other features. Rivera filed a complaint with the ITC regarding Solofill’s “beverage capsules…made to fit into a Keurig® brewer, and include an integrated mesh filter surrounding a space designed to accept loose coffee grounds.” In its initial decision, the Administrative Law Judge (“ALJ”) held “that Solofill did not directly infringe because [it] only imported the cartridges, and the claims required the combination of Solofill’s accused cartridges and a and a Keurig®-type brewer” and was not liable for induced or contributory infringement because it did not have pre-suit knowledge of the ‘320 patent, and therefore lacked the required mens rea for indirect infringement.” The ALJ also held that “Solofill had not proved invalidity of the ‘320 patent.” “On review, the Commission concluded there was no violation of § 337” because the asserted claims were invalid for lack of written description and certain claims were anticipated (different reasons). The FC panel explained that written description is a question of fact reviewed for substantial evidence on appeal from the ITC (SSIH Equip., FC 1983; Hynix, FC 2011 (must show clear and convincing evidence); Ariad, FC 2010 (“reasonably convey…that the inventor had possession of the claimed subject matter as of the filing date”)). “The basic issue in this case is whether the ‘pod adaptor assembly,’ ‘pod,’ and ‘receptable’ disclosures in the patent as filed, support” the claimed “container…adapted to hold brewing material”. The ITC concluded “the specification was entirely focused on a ‘pod adaptor assembly’ or ‘brewing chamber,’ and did not disclose a container that was itself a pod or that contained an integrated filter”, citing “the explicit definition of ‘pod’ in its Background section” as well as “the narrower ‘typical’ definitions”. The FC opinion explains that “[t]he parties agree that nothing in the ‘320 patent explicitly describes a pod adaptor assembly with a filter integrated into the cartridge” (Solofill’s product). And it found “no hint or discussion of a cartridge or pod adaptor assembly that also serves as the ‘pod’”, explaining that “[i]nstead, the specification explains how the cartridge may be adapted to accept a separate ‘pod’ to be used inside the cartridge” (“The disclosure of the ‘320 patent consistently describes an invention in which the ‘pod’ and the receptacle or container are distinct components…[w]hatever a ‘pod’ is, the specification indicates it is distinct from the receptacle….”) Rivera argued “that an ordinary artisan would read the broad definition of ‘pod’ as encompassing anything containing a water permeable material that contains brewing material, in whatever form” and “that the background knowledge…can supplement the teaching in the specification” but the FC panel disagreed (“an undisclosed configuration”; Boston Sci., FC 2011 and Falkner, FC 2006 (“essential genes” known in the art vs. Ariad, FC 2010 and ICU Medical, FC 2009 (“spikeless” medical valves not disclosed)). Thus, the ITC decision was affirmed (did not reach anticipation).