Eko Brands, LLC v. Adrian Rivera Maynez Ent., Inc. et al. (“ARM”)
Docket No. 2018-2215, -2254
DYK, REYNA, HUGHES
January 13, 2020
Brief Summary: DC decisions that ARM’s claims are invalid for obviousness and not infringed, and that ARM willfully infringed Eco’s patent affirmed.
Summary: ARM appealed DC judgment that claims 8 and 19 of ARM’s US 8,720,320 relating to an adaptor for use with Keurig(TM) single-brew coffee machines (“pods”) are invalid for obviousness and not infringed, as well as its award of attorney’s fees to Eko. Claims 5-8 and 18-20 of the ‘320 patent were previously found invalid for lacking written description by the ITC and affirmed by the FC (Rivera, FC 2017). The ITC issued limited exclusion and cease and desist orders against Eko as to claims 8 and 19. ARM also appealed the DC judgment that ARM infringes Eko’s US 8,707,855 relating to a reusable filter cartridge device for single-serve brewing machines, and Eco cross-appealed the DC’s findings of no willful infringement and denial of enhanced damages. ARM argued that the ‘320 patent “brewing chamber” must be sealed, pointing to two Keurig patents that are incorporated by reference into the ‘320 patent (“[B]ecause these prior art references depicted enclosed brewing chambers, the term brewing chamber in the ‘320 patent must also be enclosed.”) The FC panel disagreed because this definition would improperly “exclude…a preferred embodiment” (SynQor, FC 2013 (requires “highly persuasive evidentiary support”); Phillips, FC 2005). On obviousness, ARM argued that the cited references do not disclose the “cover” of the brewing chamber but the FC panel disagreed and without much discussion found the jury verdict to be supported by substantial evidence. ARM also argued the DC improperly awarded Eko attorney’s fees after finding Eko did not infringe the ‘320 claims because it misconstrued the claim term “passageway”, but the FC panel agreed with the DC’s construction and reasoning (“[n]o reasonable person looking at the cut-out openings on the side of [Eko’s] devices would describe them as passageways”). Judge Reyna’s dissent argued this construction adds “a negative limitation that is unsupported by the specification” (citing, e.g., Linear Tech., FC 2009) ARM also argued the DC erred in awarding attorney’s fees to Eko regarding the obviousness determination since the DC’s “denial of summary judgment conclusively established the reasonableness of its litigation position” (ARM citing Checkpoint Sys., FC 2017). But the FC panel explained that Checkpoint does not stand for this point, and only that the DC must “always give that denial decisive weight” and “‘[t]here is no precise rule or formula’ for deciding whether a case is ‘exceptional’” (Octane Fitness, US 2014), and found the DC did so and “provided a reasonable explanation” for its decision. ARM also argued that the DC’s finding of infringement of Eko’s ‘855 patent was incorrect because it misconstrued claim 8 “as not requiring a ‘single-serve beverage brewer’” (“A beverage brewing device for use with a single serve beverage brewer…”) and “it sold only the brewing device”. But the FC panel explained that “claim 8 on its face does not require a beverage brewer, even if the preamble is limiting” (“it is only as a ‘reference point’ to define the purpose and structure of the brewing device” (C.R. Bard, FC 1998); “noting in prosecution history suggesting that the beverage brewer itself is part of the claim”). The FC panel also found the jury instructions regarding willful infringement “was erroneous” but “taken as a whole provides reasonable clarity” and therefore not improper (Verizon, FC 2007 (challenger must prove jury instructions “in their entirety were incorrect or incomplete”, “legally erroneous jury instruction can only be harmless if it ‘could not have changed the result’”); Halo, US 2016 (“‘willfulness’ requires a jury to find no more than deliberate or intentional infringement”)). The DC decisions were therefore affirmed.