Of Closed Pods, Open Cartridges, Single-Brew Coffee Machines, and Descriptive Issues
| June 5, 2017
Rivera v. ITC (Precedential)
May 23, 2017
Before Reyna, Linn and Chen. Opinion by Linn.
Summary:
The Federal Circuit affirmed an ITC decision that the asserted patent claims are invalid for lack of written description. The patent application as filed described only a coffee machine with a cartridge adapter configured to receive a closed “pod”, not a cartridge adapter with an open filter for ground coffee. Thus, the written description did not show possession by the inventors of a genus encompassing the open-filter cartridge adapters at the initial filing date.
Details:
Rivera’s patent is directed to a cartridge adapter for a single-brew coffee machine, which allows the use of a variety of coffee-containing filter packages, or “pods”, instead of the integral-filter coffee cartridges sold by the coffee machine manufacturer. The ITC respondent imports open-filter cartridge adapters, in which the user can pour loose ground coffee.
The introduction of Rivera’s patent explains that there are two types of single-brew coffee machines:
Some machines have brewing chambers configured to receive pods which are small, flattened disk-shaped filter packages of beverage extract, while other machines are configured to accommodate larger, cup-shaped beverage filter cartridges.
The objective of the invention is to adapt a cartridge-type coffee-machine to be able to use pods.
The patent application was filed with initial claims directed to a “pod adaptor assembly” including a “receptacle… adapted to provide a support surface for a pod” or a “housing having an interior region adapted to receive a beverage pod”. After seven years, three requests for continued examination and an appeal, the issued claims do not mention “pod” anymore, but only a “beverage brewer” comprising a “receptacle configured to receive the brewing material” (cf. representative claim 5).
The ITC judge initially determined that there was no infringement: no direct infringement since only the cartridge adapter was imported, not a “beverage brewer”, and no induced or contributory infringement since the respondent was not aware of the patent before the action. But ultimately, the Commission’s decision was that the asserted claims are invalid for lack of written description.
In the Rivera patent’s description:
1) The term “pod” is defined explicitly:
[A]s used herein, the term ‘pod’ is a broad term and shall have its ordinary meaning and shall include, but not be limited to, a package formed of a water permeable material and containing an amount of ground coffee or other beverage therein.
2) All embodiments relate to a cartridge adapter for use with a pod, not with an integrated filter.
The Appeals Court agrees with the Commission’s conclusion that the broad definition of a “pod” does not cover an integral filter cartridge, citing the admission by Rivera’s expert that “a pod implies to me some sort of a construction that . . . has been prepared and sealed”, so that even the broad definition of “pod” cannot cover open filters, as had been argued by a dissenter at the Commission.
The Appeals Court also agrees that “the distinction of the ‘pod’ from the cartridge or container is fundamental to the problem and solution taught in the specification”, and that the patent “consistently describes an invention in which the ‘pod’ and the receptacle or container are distinct components”.
In sum, the patent’s description is limited to a cartridge adapter for a “pod”, so the written description does not show that the inventor had possession of a broader genus of cartridge adapter encompassing an open-filter cartridge adapter.
Takeaway:
USPTO patent examiners interpret claims broadly; they also tend to accept broad interpretations of descriptive support. Reviewing the description to draft broader claims is a valid prosecution strategy in order to adapt claim scope to industrial or market developments, but when validity is contested, courts and agencies can be expected to scrutinize more carefully whether the inventors showed possession of the entire claim scope at the patent’s initial filing date.
