Trials@uspto. gov
`571-272-7822
`
`Paper 29
`Date: April 10, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NESPRESSO USA,INC.,
`Petitioner,
`
`V.
`
`K-FEE SYSTEM GMHB,
`Patent Owner.
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`Before GRACE KARAFFA OBERMANN, JAMESJ. MAYBERRY,and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`MAYBERRY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`571-272-7822
`
`Paper 29
`Date: April 10, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NESPRESSO USA,INC.,
`Petitioner,
`
`V.
`
`K-FEE SYSTEM GMHB,
`Patent Owner.
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`Before GRACE KARAFFA OBERMANN, JAMESJ. MAYBERRY,and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`MAYBERRY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`
`IPR2022-01574
`Patent11,254,491 B2
`
`I.
`
`INTRODUCTION
`
`Nespresso USA,Inc. (“Petitioner”) filed a Petition (“Pet.”’) requesting
`
`interpartes review of claims 1—13 (“Challenged Claims”) ofU.S. Patent
`
`No. 11,254,491 B2 (Ex. 1001, the “’491 patent’). Pet. 1. K-fee System
`
`GmbH (“Patent Owner’) owns the 7491 patent. Paper4, 1.
`
`For the reasons provided below, we concludethat Petitioner has not
`
`proven, by a preponderanceofthe evidence, that any ofthe Challenged
`
`Claims are unpatentable.
`
`A.
`
`Procedural History
`
`Uponreview ofthe Petition, Prelimmary Patent Owner Response
`
`(Paper8), Petitioner’s Preliminary Reply (Paper 10), and Patent Owner’s
`
`Preliminary Sur-reply (Paper 11), and evidence in the record, weinstituted
`
`an interpartes review proceeding onall challenges in the Petition. Paper 12
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`(“Inst. Dec.”); see 37 C.F.R. § 42.108(a) (2023) (“Wheninstituting inter
`
`partes review,the Board will authorize the review to proceed on all of the
`
`challenged claims and onall grounds ofunpatentability asserted for each
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`claim.”).
`
`Patent Ownerfiled a Responseto the Petition. Paper 17 (“PO
`
`Resp.”). Petitioner filed a Reply to the Patent Owner Response. Paper 19
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`(“Pet. Reply”). Patent Ownerfiled a Sur-reply to the Reply. Paper21 (“PO
`
`Sur-reply”).
`
`An oral hearing washeld on January 12, 2024, and a transcript is
`
`includedin the record. Paper 28 (“Tr.”).
`
`B.
`
`Real Parties-in-Interest
`
`Petitioner identifies itself and Nestle USA,Inc., Nestle Nespresso SA,
`
`and Societe Des Produits Nestle SA as the real parties-in-interest. Pet. 82.
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`IPR2022-01574
`Patent11,254,491 B2
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`Patent Owneridentifies itself'as the sole real party-in-interest.
`
`Paper 4, 2. Patent Owneraddsthat it “is a wholly owned subsidiary of
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`Kruger GmbH & Co. KG,along with Kruger North America, Inc.” /d.
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`C.
`
`RelatedMatters
`
`The 491 patentis the subjectoflitigation in the U.S. District Court
`
`for the Central District of California, in a case styled K-F’ee System GmbHv.
`
`Nespresso USA, Inc., Case No. 2:22-cv-00525-GW. Pet. 82; Paper 4, 2; see
`
`Ex. 1048 (identifying the court as the U.S. District Court for the Central
`
`District of California).
`
`D.
`
`The ’491 Patent
`
`The 491 patent,titled “Portion Capsule Having an Identifier,” issued
`
`February 22, 2022, from an application filed July 23, 2021, and ultimately
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`claims priority to three German patent applications, the earliest ofwhich was
`
`filed July 22,2010. Ex. 1001, codes (54), (45), (22), (30). The application
`
`that matured into the ’°491 patentis related, through a series of continuation
`
`and divisionalapplications, to application No. PCT/EP201 1/003677, filed on
`
`July 22,2011.
`
`/d. at code (60).
`
`The 491 patent is directed to “a portion capsule for producinga
`
`beverage.” Ex. 1001, 1:6-7. Wereproduce Figure 2A from the *491 patent
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`below.
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`
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`IPR2022-01574
`Patent 11,254,491 B2
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`aa
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`Figure 2A depicts “a portion capsule containing a barcode.”
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`Ex. 1001, 7:31—32. Portion capsule 1 includes base element 2 with wall
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`region 2.1 and bottom area2.2. /d. at 8:44-47. Portion capsule | includes
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`barcode 50 on the top surface ofmembrane 4.
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`/d. at 8:47-48. Altematively,
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`barcode 50 could be placed on the edge region offlange 17, opposite
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`membrane 4, as indicated by arrow 15.
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`/d. at 8:54—56. “Sucha barcodeis
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`read out by a detector 13 placed, for example, in the media chute. The
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`barcode represents the identifier according to [the] invention.” /d.
`
`at 8:57—59.
`
`Wereproduce Figures 16A and 17A from the ’491 patent below.
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`
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`IPR2022-01574
`Patent 11,254,491 B2
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`
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`
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`
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`
`Fig. DA FIG. 17A
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`Figure 16A depicts “a portion capsule with a gearwheelplaced in the
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`brewing chamber,” and Figure 17A depicts an embodimentofthe portion
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`capsule ofFigure 16A. Ex. 1001, 7:58-61. These figures show
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`flange 17/edge region 2.4 that includes a structurefor fit locking,friction
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`locking and/or detection 2.4.2 1n the outerarea (that is, the outer
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`circumference of flange 17/edge region 2.4). /d. at 10:19—24. Inthis
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`example, the structure is a gearwheelthat is formed by several
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`recesses/bulges evenly arranged in the edge region. /d. at 10:24—28. As
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`
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`IPR2022-01574
`Patent 11,254,491 B2
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`seen in Figure 16A, seal 31, which is attached to brewing chamber27,
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`interacts with seal surface 2.4.1. /d. at 10:28-31. “[S]eal 31 makes sure that
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`the water coming from . .. water inlet 28 flows through the portion capsule
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`by passing an opening, whichis made by... . mandrel 29, [rather] than
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`around”the outside ofthe capsule. /d. at 10:31—34. As seen in Figure 16A,
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`seal 31 rests within a groove(notlabeled).
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`Asseen in Figure 17A, portion capsule 1 is held by two holding
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`arms 30, which interact with the gearwheel structure. Ex. 1001, 10:42—45.
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`Withoutthis structure, the holding arms do nothold the portion capsule and
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`the portion capsule is not inserted into the brewing chamber.
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`/d.
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`at 10:45—-48. According to the written description ofthe invention, the
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`portion capsule “has only one identifier’ to ensurethat hot water will not “be
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`discharged under high pressure” to “compromise the user’s safety”or
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`damagethe coffee machine, as may happen when “the wrong portion
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`capsule” is inserted into themachine. /d. at 8:17—27.
`
`E.
`
`Illustrative Claim
`
`Of the Challenged Claims, claims 1,7, and 10 are independentclaims.
`
`Claim 1 is representative and we reproduce it below.
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`A beverage system for making a beverage, comprising:
`1.
`A)asingle-serve capsule compnising:
`1) a base element with a cavity, in which a beverage
`material is provided, the base element being symmetrical about
`a central longitudinal axis thereof and having a rounded bottom
`portion;
`
`il) a flange extending outwardly from the base
`element, the flange comprising a top side and an opposing
`bottom side;
`
`111) a cover fastenedto the top side ofthe flange, the
`cover 1s bowed outwardly in a central region ofthe coverrelative
`to a peripheral region of the cover, the cover includes a region
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`
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`IPR2022-01574
`Patent 11,254,491 B2
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`configured to be pierced at a location that is offset from the
`central longitudinal axis;
`iv) a barrier layer to prevent moisture or aroma from
`escaping out ofthe single-serve capsule; and
`v) an identifier, which includes a repeat pattern,
`provided on the bottom side ofthe flan ge;
`B) a beverage machine comprising:
`1) a sensor/detector;
`ii) a receptacle configured to receive the single-
`serve capsule;
`iil) a pump controlled to supply water into the
`single-serve capsule only upon detection ofthe identifier by the
`sensor/detector anda determination by the beverage machinethat
`the single-serve capsule is suitable for use with the beverage
`machine;
`
`iv) a chamfered mandrel that is configured to pierce
`the cover at
`the location that is offset from the central
`longitudinal axis;
`v) a groove that
`chamfered mandrel; and
`vi) a seal that is at least partially seated in the
`groove and configured to bear against a top side of the cover in
`a region betweena peripheral edge ofthe cover and the region of
`the coverthat is pierced by the chamfered mandrel.
`Ex. 1001, 12:59—13:30 (emphasis added). Relevant to this Final Written
`
`laterally offset from the
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`is
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`Decision, all three independent claimsinclude the groove/seal configuration
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`shownin italics above. See id. at 13:64-14:13-15, 14:54-15:5.
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`
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`IPR2022-01574
`Patent11,254,491 B2
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`I.
`
`Prior Art and Asserted Grounds
`
`Petitioner asserts that the Challenged Claimsare unpatentable on the
`
`following grounds:
`
`
`
`Yoakim,” Jarisch *929,* Rossi‘
`Yoakim, Jarisch °929, Rossi,
`
`Pet. 30.
`
`Petitioneralso relies on the declaration testimony ofMr. Michael
`
`Jobin in support of its challenges. See Ex. 1003 (providing the Declaration).
`
`Patent Ownerchallenges the asserted grounds and includes declaration
`
`testimony from Dr. Laurens Howle. See Ex. 2021 (providing the
`
`Declaration).
`
`The following subsections provide brief descriptions ofthe asserted
`
`prior art references.
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296-07 (2011), took effect on September16, 2011, andthe
`changesto 35 U.S.C. §§ 102 and 103 in the AJA donotapply to any patent
`application filed before March 16, 2013. Becauseneither party disputes that
`the application that matured intothe ’491 patent hasaneffective filing date
`before March 16, 2013, we refer to the pre-AIAversion ofthe statute. See
`Pet. 35 (arguingthat the earliest possible priority date for the °491 patent is
`July 22, 2011); PO Resp. 1, 17-45 (arguing that the priority date for the ’491
`patent is September 2, 2010).
`7 US 2010/0239734 A1, published September 23, 2010 (Ex. 1004,
`“Yoakim”).
`> US 2013/0064929 A1, published March 14, 2013 (Ex. 1006,
`“Jarisch °929”). Petitioner includes “929” whenreferring to Exhibit 1006, to
`distin guish it from Exhibit 1005, where Jarisch 1s also the first named
`inventor. We adopt this convention for our Decision.
`* WO 2010/099806 A1, published September 10, 2010 (Ex. 1041, “Rossi’”).
`> US 2008/0105131 Al, published May 8, 2008 (Ex. 1009, “Castellani’”).
`
`8
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`IPR2022-01574
`Patent11,254,491 B2
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`1. Yoakim
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`Yoakim, titled “Method for Preparing a Beverage or Food Liquid and
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`System Using Brewing Centrifugal Force,” published September 23, 2010,
`
`from an application filed May 7, 2010. Ex. 1004, codes (54), (43), (22).
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`Yoakim “relates to a capsule, device, system and method for preparing a
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`beverage or food liquid from a food substance whichis brewedor extracted
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`by using centrifugal forces exerted on a capsule which contains the
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`substance.” /d. 42.
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`Yoakim’s device identifies different capsules and operatesits
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`beverage device based on predetermined parametersfor the identified
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`capsule. Ex. 1004 4 25; see, e.g., id. § 192 (“[T]he control unit may be
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`associated to a capsule recognition system enabling to recognize the types of
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`capsules, 1.e., espresso, lungo, cappuccino, long coffee (e.g., 180-400 ml),
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`latte, tea, etc., and to adjust the speed and/or other brewing parameters (e.g.,
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`water temperature) according the capsule which1s inserted in the device.”).
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`“A recognition system uses acode on the capsule and recognized by the
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`device, such asa color, a barcode, an RFID, a magnetic code, ferromagnetic
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`micro-wiresor labels, shapes and combinationsthereof.” /d. J 192.
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`
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`IPR2022-01574
`Patent 11,254,491 B2
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`Wereproduce Yoakim’s Figure 1, below.
`
`
`
`
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`Figure | depicts “a schematic representation of [Yoakim’s] system.”
`
`Ex. 1004 430. System 1 includes device 2 and capsule 3, with device 2
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`having brewing module 4, which receives capsule 2 for brewing. Jd. 180.
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`After brewing, the capsule is removedanddiscarded. /d. Module4is
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`connected to water reservoir 5, with the water delivered to module 4 by low
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`pressure pump 6.
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`/d. Water heater 7 heats the water to the desired
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`temperature for the capsule. /d.
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`One embodimentofthe beverage system 1s depicted in Figure 35. We
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`reproduce below Petitioner’s annotated version ofFigure 35.
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`10
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`IPR2022-01574
`Patent 11,254,491 B2
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`> ay
`
`Ree
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`FIG. 35
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`Pet. 68. Figure35 is an enlarged version of Yoakim’s Figure 34, whichis a
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`cross-sectional view of a beverage production module. Ex. 1004 §{ 63-64.
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`Petitioner annotates the figure with two rectangular boxes to emphasize
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`Yoakim’s flow restriction means. See Pet.68. Yoakim describes that
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`annular engaging portion 157 is biased underthe force ofelastic loading
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`means 158, which can beaspring. Ex. 10049436. Spring 158 interacts
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`with base portion 160 of annular en gaging portion 157 and counter-force
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`portion 161 to force pressing peripheral surface 159 against the rim of a
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`capsule. /d.; see also id. at Fig. 35 (showingspring 158, annular engaging
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`portion 157, with pressing peripheral surface 159 and base portion 160, and
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`counter-force portion 161).
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`2. Jarisch 929
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`Jarisch ’929, titled “Support and Capsule for Preparing a Beverage by
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`Centrifugation, System and Methodfor Preparing a Beverage by
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`11
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`IPR2022-01574
`Patent 11,254,491 B2
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`Centrifugation,” published March 14, 2013, from an application filed
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`May12, 2011. Ex. 1006, codes (54), (43), (22). Jarisch ’929 “relates in
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`particular to coding supports adapted to store informationrelated to a
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`capsule, capsules associated with/or embedding coding supports, reading
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`and processing arrangements for reading and using such information for
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`preparing abeverage.” /d. 41.
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`Jarisch ’929’s Figure 2 is relevant to Petitioner’s unpatentability
`
`positions and is reproduced below.
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`Fig. 2
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`Figure 2 depicts support 20, which is part ofthe beverage capsule.
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`Ex. 1006 9.51. Support 20 includes “section 22 on whichat least one
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`sequence S1, S2, $3, S4 of symbols 24 is represented so as that each symbol
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`is sequentially readable, by a reading arrangementof an external device,”
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`with “each sequence coding a set of information related to the capsule.” Jd.
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`The information may include “information relatedto parameters for
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`preparing a beverage with the capsule,”“information for retrieving locally
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`and/or remotely parameters for preparing a beverage with the capsule,”
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`“information related to the manufacturing ofthe capsule,” or “information
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`12
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`IPR2022-01574
`Patent11,254,491 B2
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`for retrieving locally and/or remotely information relatedto the
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`manufacturing ofthe capsule.” /d. J§] 52-55. “The sequenceis preferably
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`repeated along the circumference in order to ensureareliable reading.” /d.
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`q 68.
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`“The support can be part of, or be formeddirectly on, the body ofthe
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`capsule. The support can also be disposed on the bottom side ofthe rim of
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`the capsule.” Ex. 1006 4 64; see, e.g., id. § 90 ([C]lapsule 7 may comprise a
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`support mounted havingat least one sequence 70, and mounted on the
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`bottom side 72 ofthe rim 73 of the capsule.’’).
`
`3. Rossi
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`Rossi,titled “System ofEdible-Product Making Machine and Load
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`Element and Process for Control ofMachine,” published September10,
`
`2010. Ex. 1041, codes (54), (43). Rossi “relates to a system ofan
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`edible-product making machine and a load element[(e.g.,a capsule
`
`containing coffee powder)], anda process for controlling the operation of
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`the edible-product making machine.” Ex. 1041, 1.°
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`Relevant to Petitioner’s unpatentability positions, Rossi states that
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`using the wrong capsule or operating conditions “may cause the machine to
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`malfunction and can prejudicethe safety and integrity ofthe machine and
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`... may harm theuser.” Ex. 1041,3. To address this and other concerns,
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`Rossi discloses a process for controlling the operation of an edible-product
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`making machine, witha first step ofrecognizing an identifying element and
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`a validation element, a second step ofvalidating the validation element, and
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`a third step of operating the machineonly ifthe identifying elementis
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`° Consistent with Petitioner, we reference the pagination for the WO
`document, rather than the exhibit. For example, we cite to “Ex. 1041, 1” for
`page 1 ofthe publication, which appears on page 3 of the exhibit.
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`13
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`Patent 11,254,491 B2
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`recognized and the validation element is validated. /d. at 4. Rossi explains
`
`that
`
`The use of an identification element and recognition means, as
`well as the step of recognising the identification element allows
`the machine to recognise the load element and, hence,its
`contents. This in turn enables the machine to automatically
`select the operating conditions appropriate for that specific load
`element. This prevents the user from having to verify the
`contents ofthe load element, and from having to know andselect
`the operating conditions appropriate therefor.
`It also helps to
`prevent the safety hazard associated with the use of inappropriate
`operating conditions.
`
`Id. at 5.
`
`4. Castellani
`
`Castellani, titled “Delivery Head for Espresso Coffee Machines,”
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`published May 8, 2008. Ex. 1009, codes (54), (43). Relevant to Petitioner’s
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`unpatentability positions, Castellani provides“a delivery head, in which the
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`single-use or disposable capsule loading and unloading operations can be
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`performed in a very easy and safe manner, from a user standpoint.” /d. 410.
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`For example, during operation, “capsule 10 will slide on the fork element 21
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`and, after having passed the annular portion 22, will fall inside the fork
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`element 21 and, throughaspecifically designed passage, will be collected in
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`a collecting vessel.” /d. 954; see, e.g., id. Fig. 2 (depicting an embodiment
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`of the delivery head in the capsule ejecting position).
`
`A.—Legal Standards
`
`Il. ANALYSIS
`
`In interpartes reviews, a petitioner bears the burden ofproving
`
`unpatentability ofthe challenged claims, and the burden ofpersuasion never
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`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’] Graphics, Inc.,
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`14
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`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
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`Petitioner must support its challenge by a preponderance ofthe evidence.
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`35 U.S.C. §316(e); 37 C.F.R. § 42.1(d). Accordingly,all of our findings
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`and conclusions are based on a preponderance ofthe evidence standard.
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`Petitioner’s two asserted groundsare based on obviousness.
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`Section 103(a) forbids issuance of a patent when “the differences between
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`the subject matter soughtto be patented andthepriorart are such that the
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`subject matter as a whole would have been obviousat the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`The question of obviousness1s resolved on the basis ofunderlying factual
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`determinations, including: (1) the scope and content ofthe priorart; (2) any
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`differences between the claimed subject matter and the priorart; (3) the level
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`of ordinary skill in the art; and (4) when available, evidence such as
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`commercial success, long felt but unsolved needs,andfailure ofothers.’
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see KSR Int’] Co.,
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`550 U.S. at 407 (“While the sequence ofthese questions might be reordered
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`in any particular case, the [Graham] factors continue to define the inquiry
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`that controls.”). The Court in Graham explained that these factual inquiries
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`promote “uniformity and definiteness,” for “[w]hat is obvious is nota
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`question upon whichthere ts likely to be uniformity ofthought in every
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`given factual context.” 383 U.S. at 18.
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`The Supreme Court made clear that we apply “an expansiveand
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`flexible approach”to the question of obviousness. KSR Jnt’] Co.,550 U.S.
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`at 415. Whethera patent claiming the combination ofprior art elements
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`’ The parties do not direct us to any objective evidence ofnon-obviousness.
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`would have been obviousis determined by whether the improvement 1s more
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`than the predictable use ofprior art elements accordingto their established
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`functions. /d. at 417. To support this conclusion, however, it is not enough
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`to show merely that the prior art includes separate references covering each
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`separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex,
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`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
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`additionally requires that a person of ordinary skill at the time ofthe
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`invention “would have selected and combined thoseprior art elements in the
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`normal course ofresearch and developmentto yield the claimed invention.”
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`Id.
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`“[O]bviousness must be determinedin light ofa// thefacts, and...a
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`given course of action often has simultaneous advantages and disadvantages,
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`and this does not necessarily obviate motivation to combine”teachings from
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`multiplereferences. Medichem, S.A. v. Rolabo, S.L.,437 F.3d 1157, 1165
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`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
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`Pharms., Inc. , 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
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`absence of a motivation to combine references in an obviousness
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`determination is a pure question of fact.”). As afactfinder, we also must be
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`aware “of the distortion caused by hindsight bias and mustbe cautious of
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`arguments reliant upon expost reasoning.” KSR Int’) Co.,550 U.S. at 421.
`
`B.
`
`Level ofOrdinary Skill in the Art
`
`1. The parties’ contentions and ourfindings
`
`The level of skill in theart 1s “a prism or lens” through which we view
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`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001). “This reference point prevents... factfinders
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`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
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`Id. Factors pertinent to a determination ofthe level of ordinary skill in the
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`art include: (1) educational level ofthe inventor; (2) type ofproblems
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`encounteredin the art; (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication ofthe technology; and
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`(6) educational level ofworkers active in the field. Env ’t Designs, Ltd. v.
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`Union Oil Co., 713 F.2d 693, 696—97 (Fed. Cir. 1983) (citing Orthopedic
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`Equip. Co. v. All Orthopedic Appliances, Inc. ,707 F.2d 1376, 1381—82 (Fed.
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`Cir. 1983)). Not all such factors maybe present in every case, and one or
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`more ofthese or other factors may predominate in a particularcase.
`
`/d.
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`Moreover,“[t]hese factors are not exhaustive but are merely a guide to
`
`determining the level of ordinary skill in the art.” Daiichi SankyoCo.v.
`
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determiningalevel
`
`of ordinary skill, we also may look to the prior art, which mayreflect an
`
`appropriate skill level. Okajima, 261 F.3d at 1355.
`
`Petitioner contendsthat a person of ordinary skill in the art would
`
`have had “a bachelor’s degree in en gineering plus five years of experience in
`
`design ofmechanical beverage systems, or similar products.” Pet. 27
`
`(referencing Ex. 1003 § 40).
`
`Patent Ownercontendsthat a person of ordinary skill in the art would
`
`have had
`
`a bachelor’s degree in engineering plus five years of experience
`in design of mechanical beverage systems, or similar products,
`as well as experience with sensors for recognizing an identifier.
`Additional education might substitute for
`some of
`the
`experience, and substantial experience might substitute for some
`of the educational background.
`
`PO Resp. 9. Patent Owner doesnot provide any support for this contention.
`
`See id. Dr. Howle, Patent Owner’s declarant, testifies that
`
`I have reviewed the qualifications that Petitioner contends that a
`person having ordinary skill in the art. .
`.
`in the 491 Patent
`
`17
`
`
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`IPR2022-01574
`Patent 11,254,491 B2
`
`I note that the Board, in its Decision Granting
`would have.
`Institution, adopted Petitioner’s definition of the level of
`ordinary skill, which requires a [person of ordinary skill in the
`art] to have a bachelor’s degree in engineering plusfive years of
`experience in design ofmechanical beverage systems,or similar
`products, as well as experience with sensors for recognizing an
`identifier. Additional education might substitutefor some ofthe
`experience, and substantial experience might substitutefor some
`of the educational background.
`For the purposes of this
`Declaration, I adopt this definition with respect to the °491
`Patent.
`
`Ex. 2021 4 24 (citing Inst. Dec. 14-15) (emphasis added). We note that the
`
`italicized text in the quoted testimony regarding additional education as a
`
`substitute for some ofthe experience wasnot either Petitioner’s proposed
`
`characterization ofthe level of ordinary skill or our adopted characterization
`
`in the Institution Decision. See Pet. 27; Inst. Dec. 14-15.
`
`In our Institution Decision, we adopted Petitioner’s definition ofthe
`
`level of ordinary skill, but included that a person having ordinary skill in the
`
`art would have had experience with sensors for recognizing an identifier.
`
`Inst. Dec. 14—16. First, the Challenged Claims, and many ofthepriorart
`
`references, are directed to beverage systems. See, e.g., Ex. 1001,
`
`12:59-13:30 (providing claim 1, which is directedto a “beverage system”
`
`andrecites limitations directed to “a single-serve capsule” and “a beverage
`
`machine”); Ex. 1004 ¢ 2 (relating to “a capsule, device, system and method
`
`for preparing a beverageor food liquid from a food substance whichis
`
`brewed or extracted by using centrifugal forces exertedon a capsule which
`
`contains the substance’); Ex. 1006 § 1 (relating “toa capsule, capsules
`
`associated with/for embedding coding supports, reading and processing
`
`arrangements for reading and using such information for preparinga
`
`beverage”); Ex. 1041, 1 (relating “to a system of an edible-product making
`
`18
`
`
`
`IPR2022-01574
`Patent11,254,491 B2
`
`machineandaload element, anda processfor controlling the operation of
`
`the edible-product making machine”).
`
`Second, the ’491 patent, as well as the prior art ofrecord, includes
`
`systems that use identifiers on a capsule read by the beverage machine to
`
`control the operation ofthemachine. See, e.g., Ex. 1001, 1:28—34 (“[T]he
`
`present invention... has an identifier, which allowsto individualize the
`
`respective portion capsule.”’); Ex. 1004 425 (discussing the system’s
`
`“identification means”); Ex. 1006 § 1 (“The present invention relates in
`
`particular to coding Supports adapted to store information related to a
`
`capsule, capsules associated with/for embedding coding supports, reading
`
`and processing arrangements for reading and using such information for
`
`preparing a beverage.”’); Ex. 1041, code (57) (“The process for controlling
`
`the operation of an edible-product making machine[includes]...
`
`recogni[zing] an identifying element... .”).
`
`Asfor Patent Owner’s addition that “[a]dditional education might
`
`substitute for some ofthe experience, and substantial experience might
`
`substitute for some ofthe educational background,” wefind that this
`
`characterization is too vague. See PO Resp. 9. Patent Owner contends that
`
`the additional education (the length oftime and type ofwhich1s not defined)
`
`maybe substituted for “some ofthe experience” (which, presumably, means
`
`notall of the experience, but at what level is undefined), and that
`
`“substantial experience” (whichis not defined) may be substituted for “some
`
`of the” education (which, presumably, meansnotall ofthe education, butat
`
`whatlevel is undefined). See id.
`
`Accordingly, wefind that the level of ordinary skill in the art for
`
`the °491 patent is a bachelor’s degree in engineering plus five years of
`
`19
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`
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`experience in design ofmechanical beverage systems, or similar products, as
`
`well as experience with sensors for recognizing an identifier.
`
`2. Dr. Howle
`
`Petitioner argues that Dr. Howle doesnot qualify as a person having
`
`ordinary skill in the art. Pet. Reply 2. Petitioner argues that Dr. Howle
`
`“purports to have “1,300 hours’ designing and analyzing coffee systems in
`
`patent litigations, only approximately 100 hoursrelate to design.” /d.
`
`(referencing Ex. 1058, 49:23—50:8); cf Ex. 2021 4 12 (“I have accumulated
`
`more than 1,300 hours designing, analyzing, and evaluating single-serve
`
`beverage brewing systems.”).
`
`Patent Ownerrespondsthat“there is no requirementfor experts tofall
`
`squarely within the definition of a [person having ordinary skill in theart] or
`
`to have specific design experience in the claimed technology by the priority
`
`date ofthe asserted patent.” PO Sur-reply 9 (citing SEB S.A. v. Montgomery
`
`Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010); Bayerische Motoren
`
`Werke Aktiengesellschaftv. Paice LLC, IPR2020-01386, Paper 37 at 73
`
`(PTAB Jan. 31, 2022)). Patent Owneralso arguesthat the standard ofa
`
`person having ordinary skill in the art “is not the end-all-be-all—rather,
`
`courts assess whether the expert has “scientific, technical, or other
`
`specialized knowledge[that] will help the trier of fact to understand the
`
`evidence or to determinea fact in issue.’” /d. at 9-10 (citing TerremarkN.
`
`Am. LLC vy. Joao Control & Monitoring Sys., LLC, IPR2015-01466,
`
`Paper 23 at 5—6 (PTAB Dec. 29, 2016); GoPro, Inc. v. Contour IP Hold.
`
`LLC, IPR2015-01078, Paper 84 at 12 (PTAB July 31, 2019); Endress +
`
`Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed.
`
`Cir. 1997)).
`
`Patent Ownerarguesthat
`
`20
`
`
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`. holds three relevant degrees, including a B.S.E.
`.
`Dr. Howle .
`(1989), M.S. (1991), and Ph.D. (1993) degrees from Duke
`University in the field of Mechanical Engineering. Dr. Howle
`has “accumulated more than 1,300 hours designing, analyzing,
`and evaluating single-serve beverage brewing systems” and has
`considerable experience designing and using products that are
`similar to mechanical beverage systems and have similar parts
`therein such as “strain gauges, thermocouples, thermistors, photo
`emitter/detector circuitry, ultrasonic and inductive proximity
`sensors, Hall effect transducers, piezoelectric elements, pressure
`transducers, ultrasonic and impellor flow meters, acceleration
`gauges, and interferometers.”
`
`PO Sur-reply 11; see also Tr. 41:6—45: 16 (providing Patent Owner’s
`
`arguments at oral hearing concerning Dr. Howle), 57:16—60:9 (providing
`
`Petitioner’s rebuttal at oral hearing concerning Dr. Howle), 73:10—74:7
`
`(providing Patent Owner’s sur-rebuttal at oral hearing concerning
`
`Dr. Howle).
`
`The Federal Circuit has madeclear that, “[t]o offer expert testimony
`
`from the perspective ofa skilled artisan in a patent case—Jikefor claim
`
`construction, validity, or infringement—awitness must at least have
`
`ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade
`
`Comm’n, 22 F.4th 1369, 1376-77 (Fed. Cir. 2022) (emphasis added).
`
`“Without that skill, the witness’[s] opinions are neither relevant nor
`
`reliable.” /d. at 1377. The Federal Circuit reasonsthat “‘[a]dmitting
`
`testimony froma person... with no skill in the pertinentart serves only to
`
`cause mischiefand confusethefactfinder.’ ... That testimony would
`
`‘amount| | to nothing more than advocacy from the witness stand.’” /d.
`
`(quoting Sundance, Inc. v. DeMonte Fabricating Ltd. , 550 F.3d 1356, 1362,
`
`1364-65 (Fed. Cir. 2008).
`
`21
`
`
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`Wefind that Patent Ownerhas not established that Dr. Howle
`
`possessesat least the level of ordinary skill in the art. Our level of ordinary
`
`skill in the art requires a bachelor’s degree in engineeringplusfive years of
`
`experience in design ofmechanical beverage systems, or similarproducts,
`
`as well as experience with sensorsfor recognizing an identifier. Patent
`
`Ownerdoesnot persuasively account for how Dr. Howle’s experience,
`
`extensive as it may be, includesfive years of experience in design of
`
`mechanical beverage systems, or similar products, as well as experience
`
`with sensors for recognizing an identifier. Cf Kyocera, 22 F.4that 1376
`
`(“Dr. Pratt has advanced degrees in engineering and extensive experience in
`
`the design and manufacture of fastener driving tools. But he lacks
`
`experience in powernailer design.”).
`
`Patent Owner’s argument that Dr. Howle’s advanced degrees qualifies
`
`him as havingat least the skill level of a person having ordinary skill is
`
`unpersuasive. Although Patent Ownerproposesa level of ordinary skill that
`
`credits additional education, as we discuss above, Patent Ownerfails to
`
`provide sufficient explanation in support ofthat proposal. As such, we do
`
`not adopt that portion ofthe characterization ofthe level of ordinary skill.
`
`Patent Owner’s cited Federal Circuit cases and Board decisionsare
`
`inapposite, for at least the reason that these decisions pre-date Kyocera.
`
`Also, to be clear, we are not saying that an expert must havesatisfied the
`
`requirements ofthe level of ordinary skill in theart on or before the priority
`
`date ofthe challenged patent, which Patent Ownerseemsto understand was
`
`at issue here. See PO Sur-reply 9. Instead, we evaluate whether Dr. Howle
`
`had at least the requisite qualifications of a person havingordinary skill in
`
`the art by the timehe rendered his opinions.
`
`22
`
`
`
`IPR2022-01574
`Patent 11,254,491 B2
`
`Accordingly, consistent with the requirementin Kyocera, we do not
`
`credit any ofDr. Howle’s testimony offeredfrom theperspective ofaperson
`
`having ordinary skill in the art, including testimony regarding claim
`
`construction. To the extent that Dr. Howle offers other
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