Traiseiuspta. gov
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`571-272-7822
`
`Paper 9
`Date: September 13, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NESPRESSO USA,INC.
`Petitioner,
`
`V.
`
`K-FEE SYSTEM GMBH,
`Patent Owner.
`
`IPR2023-00485
`Patent 11,230,430 B2
`
`Before GRACE KARAFFA OBERMANN,JON B. TORNQUIST,and
`JAMESJ. MAYBERRY,Administrative Patent Judges.
`
`TORNQUIST,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofnter Partes Review
`35 US.C. $314
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`I.
`
`INTRODUCTION
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`A.—Background and Summary
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`Nespresso USA,Inc. (“Petitioner”) filed a Petition (Paper1, “Pet.”’)
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`requesting an interpartes review of claims 1-10 ofU.S. Patent No.
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`11,230,430 B2 (Ex. 1001, “the ’430 patent’). K-fee System GmbH(“Patent
`
`Owner’) filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
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`Resp.”). With authorization, Petitioner subsequently filed a reply to the
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`Preliminary Response (Paper7, “Prelim. Reply”) to which Patent Owner
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`filed a sur-reply (Paper8, “Prelim. Sur-reply”).
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`Wehaveauthority to determine whetherto institute an interpartes
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`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard
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`for institution is set forth in 35 U.S.C. § 314(a), which providesthat an inter
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`partes review maynotbeinstituted “unless the Director determines. .
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`. there
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`is a reasonablelikelihood that the petitioner would prevail with respectto at
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`least 1 of the claims challenged in the petition.”
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`For the reasonsset forth below, Petitioner demonstrates a reasonable
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`likelihood ofprevailing with respect to claims 1—10 ofthe ’430 patent.
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`Accordingly, weinstitute an interpartes review.
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`B.
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`Real Parties in Interest
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`Petitioner identifies itself, Nestlé USA, Inc., Nestlé Nespresso SA,
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`and Société Des Produits Nestlé SA asthe real parties in interest. Pet. 82.
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`Patent Owneridentifies itselfas the real party in interest, and notes
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`that it is “a wholly owned subsidiary ofKruger GmbH & Co. KG,along
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`with Kruger North America, Inc.” Paper3, 2.
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`

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`IPR2023-00485
`Patent 11,230,430 B2
`
`C.
`
`RelatedMatter
`
`The parties identify the following district court proceeding as a related
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`matter: K-fee System GmbH vy. Nespresso USA, Inc., No. 2:22-00525-GW
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`(C.D. Cal.). Pet. 82; Paper 3, 2.
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`D.
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`The ’430 Patent
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`The *430 patentis titled “Portion Capsule Havingan Identifier,” and
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`issued January 25, 2022, from an application filed July 26, 2021. Ex. 1001,
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`codes (22), (45), (54). Figures 2A and 2B ofthe 430 patent are reproduced
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`below.
`
`
`
`me FaY
`“
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`\
`s,
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`Figures 2A and 2B depict “a portion capsule containing abarcode.” /d. at
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`7:31-32.' As shown in Figure 2A above,portion capsule 1 includes base
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`element 2 with wall region 2.1, bottom area 2.2, and membrane 4. /d. at
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`8:11—13, 8:44-47. Membrane4 is attached to edge region 2.4 and seals the
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`cavity ofthe capsule. /d. at 8:11—13. Barcode 50 is placed “in the area of
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`the membrane’s top surface.” /d. at 8:47-48. Alternatively, as shown by
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`arrow 15, the barcode “can be attached to the base element’s edge region
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`' We haverotated Figures 2A and 2B by 180 and 90 degrees, respectively,
`for ease of reference.
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`being averted from the membrane 4.” /d. at 8:54—56. This barcodeis used
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`as an identifier and is read by detector 13 (Figure 2B), which is placed,for
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`example, in a media chute. /d. at 8:56—S8.
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`Figures 16A and 17Aare reproduced below.
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`
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`
`
`&i
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`
`
`‘
`x
`otaNe
`3 aN gg
`Ae
`SANS REAR Enea
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` s
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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 a different embodiment ofthe
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`portion capsule ofFigure 16A. Ex. 1001, 7:58-61. These figures show
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`“flange 17/edge region 2.4, which is preferably circular,” and includes a
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`* Figure 16A has been rotated 90 degreesfor ease of reference.
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`4
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`IPR2023-00485
`Patent 11,230,430 B2
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`“means for fit locking, friction locking and/or detection 2.4.2 in the outer
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`area (outer circumference).” /d. at 10:19—24. In Figure 16 and Figure 17A,
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`means 2.4.2 is a gearwheelthat is formed by several recesses/bulges evenly
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`arrangedin the edge region ofportion capsule 1. /d. at 10:24—28. Holding
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`arms 30 (Figure 17A) hold portion capsule 1 in place and interact with
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`means 2.4.2. /d. at 10:42-45. The 430 patent explains that without means
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`2.4.2 the holding armswill not hold the portion capsule, the portion capsule
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`cannot be inserted into the brewing chamber, and the capsule will instead
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`“fall throughit into a dropping box.” Jd. at 10:45—48.
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`E.
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`Illustrative Claim
`
`Petitioner challenges claims 1—10 ofthe ’430 patent. Pet. 1. Claim 1,
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`reproducedbelow,is illustrative ofthe challenged claims:
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`1. A beverage system for making a beverage, comprising:
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`a Single-serve capsule comprising: a base element withacavity,in
`which araw beverage material1s provided; a flange extending
`outwardly from the base element, the flange comprising atop side
`and an opposing bottom side; a coverthatis fastened to the top
`side of the flange to close the cavity; and a barcode provided on
`the bottom side ofthe flange; and
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`a beverage machine comprising: a sensor/detector configured to
`read the barcode; a brewing chamberconfigured to receive the
`base element ofthe single-serve capsule and having an end portion
`that opposes the bottom side ofthe flange; and a pump controlled
`to supply water into the single-serve capsule;
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`wherein the single-serve capsuleis free of a filter that is located
`inside ofthe cavity, the single-serve capsule also comprises:
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`i. an upper endportion that has an annular convexity anda
`lower end portion that has an annular concavity relative toa
`central axis ofthe base element; and
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`i. a barrier layer to prevent moisture or aroma from escaping
`out ofthe single-serve capsule;
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`wherein the beverage machine also comprises:
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`1. amandrel that is configured to pierce the cover in aregion
`that is offset from the central axis ofthe base element;
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`i1. a seal that that is configured to seal against the cover in a
`region betweena peripheral edge ofthe flange and the region
`of the coverthat is pierced by the mandrel;
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`i. a pair of holding arms for engaging the single-serve
`capsule; and
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`iv. a dropping boxfor the single-serve capsuleto fall into;
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`wherein the pumpis controlled to push the water into the sin gle-
`serve capsule only upon a determination that the read barcode
`agrees with a stored reference.
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`Ex. 1001, 12:58-13:28.
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`I.
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`Prior Art and Asserted Ground
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`Petitioner asserts that claims 1-10 ofthe 430 patent would have been
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`unpatentable on the following ground (Pet. 33):
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`Castellani’
`
`oakim*, Jarisch?,
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`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended35 U.S.C. § 103, effective March 16,
`2013. Theparties assert that the challenged claims haveanearliest effective
`filing date of either July 22, 2011, or September 2, 2010. Pet. 38-39;
`Prelim. Resp. 31-32. Accordingly, on this record, we apply the pre-AIA
`version of § 103. See 35 U.S.C. § 100(4)(1)(B).
`* US 2010/0239734 A1, filed May 7, 2010, and published September 23,
`2010. Ex. 1004 (“Yoakim”’).
`> US 2013/0064937 A1, filed May 12, 2011, and publishedMarch 14, 2013.
`Ex. 1005 (“Jarisch”).
`° WO 2010/099806 A1, filed March 6, 2009, and published September10,
`2010. Ex. 1041 (“Ross”).
`TUS 2008/0105131 A1, filed December 21, 2007, and published May8,
`2008. Ex. 1009 (“Castellani”).
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`In support of its ground ofunpatentability, Petitioner relies upon the
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`declaration ofMr. Michael Jobin. Ex. 1003.
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`I.
`
`ANALYSIS
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`A.
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`Claim Construction
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`In this proceeding, the claims ofthe ’430 patent are construed “using
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`the same claim construction standard that would be used to construe the
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`claim in acivil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b).
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`Underthat standard, the words ofa claim are generally given their “ordinary
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`and customary meaning,” which is the meaning the term would have hadto
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`a person of ordinary skill at the time ofthe invention, in the context ofthe
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`entire patent including the specification. Phillips v. AWH Corp.,415 F.3d
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`1303, 1312-13 (Fed. Cir. 2005) (en banc).
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`Petitioner asserts that no claim terms require express construction for
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`purposesofthis decision. Pet. 33.
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`Patent Ownerasserts that Petitioner argued successfully before the
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`district court that the term “barcode” means a “machine readable code
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`consisting ofparallel bars of different widths that encode more than only
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`two unique binary characters suchas 0 or 1.” Prelim. Resp. 17 (citing
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`Ex. 1052, 7,9-12). Although Patent Owner“does not agree” with this
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`construction of “barcode,”it asserts that Petitioner should not be permitted
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`to argue for a “broad, ordinary meaning”construction in this proceeding. /d
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`Asdiscussed below,we do not understandPetitionerto be advocating
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`for a construction of “barcode”that differs from its ordinary meaningin the
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`art, or that differs from the construction adopted by the district court. See
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`Pet. 57 (asserting that Yoakim expressly discloses using a “barcode’’);
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`Prelim. Reply 2—3; Ex. 1052, 13 (construing “barcode”to have “its plain and
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`ordinary meaning(i.e.,a code having bars ofvariable width, which includes
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`IPR2023-00485
`Patent 11,230,430 B2
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`the lines and gaps),” as understood by the “unequivocal statements K-fee
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`made to the EPO(i.e., the scope ofbarcode does not include the type ofbit
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`code disclosed in Jarisch/D1)’). As such, we determinethat no claim terms
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`require express construction for purposes ofthis decision. See Nidec Motor
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`Corp. v. Zhongshan Broad Ocean Motor Co. , 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (“[O|nly thoseterms need be construed thatare in
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`controversy, and only to the extent necessary to resolve the controversy.”’)).
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`B.
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`Level ofOrdinary Skill in the Art
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`Petitioner contendsthat a person of ordinary skill in theart “would
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`havea bachelor’s degree in engineering plus five years of experience in
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`design ofmechanical beverage systems, or similar products.” Pet. 31 (citing
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`Ex. 1003 ¢ 40).
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`Patent Owner contendsthat a person ofordinary skill in the art
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`“would have a bachelor’s degree in engineering plus five years of experience
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`in design ofmechanical beverage systems, or similar products, as well as
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`experience with sensors for recognizing an identifier.” Prelim. Resp. 18.
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`The parties’ proposed definitions differ only in that Patent Owner
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`would require experience with sensors for recognizing an identifier. Pet. 31;
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`Prelim. Resp. 18. Because each independentclaim ofthe ’430 patent
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`includesan “identifier,” in the form of a “barcode,” and a “sensor/detector,”
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`on this record, we agree with Patent Ownerthat one of ordinary skill in the
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`art would have experience with sensors for recognizing an identifier, based
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`on the current record. Ex. 1001, 12:66—67, 14:1—2 (each independent claim
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`of the ’430 patent requiring an “identifier” in the form of “a barcode”). As
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`such, we adopt Patent Owner’s definition ofa person ofordinary skill in the
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`art for the purposesofthis Decision.
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`C.
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`Priority Date ofthe ’430 Patent
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`The *430 patent claimspriority to a series ofUnited States patent
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`applications, the earliest ofwhich wasfiled July 22, 2011. Ex. 1001, code
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`(60). The 430 patent also claims priority to three Germanpatent
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`applications. /d. at code (30). The first German priority application was
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`filed July 22, 2010, the second German priority application wasfiled
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`September2, 2010 (“second Germanpriority application”), and the third
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`Germanpriority application wasfiled February 7, 2011.
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`/d.
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`Jarisch wasfiled May 12, 2011, and published March 14, 2013.
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`Ex. 1005, codes (22), (43); Pet. 35. Thus, to the extentthat the ’430 patent
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`is not entitledto receive the benefit ofthe priority date of one or more ofthe
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`three Germanpriority applications, Petitioner contendsthat Jarisch 1s prior
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`art to the challenged claims underat least 35 U.S.C. § 102(e). Pet. 33-35.
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`In this case, the parties’ dispute focuses on whether the challenged
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`claims are entitledto the benefit ofthe filing date ofthe second German
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`priority application. /d. at 38—46; Prelim. Resp. 36-56. We address this
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`issue below.
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`1.
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`Legal Framework
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`“It is elementary patent law that a patent application is entitled to the
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`benefit ofthe filing date ofan earlier filed application only ifthe disclosure
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`of the earlier application provides support for the claimsofthe later
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`application, as required by 35 U.S.C. § 112.” Inre Chu, 66 F.3d 292, 297
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`(Fed. Cir. 1995). One may show support for the claims ofa later application
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`by showingthat the earlier application provides written description support
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`for the claims. PowerQasis, Inc. v. T-Mobile USA, Inc. , 522 F.3d 1299,
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`1306 (Fed. Cir. 2008). This written description requirementserves an
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`important purpose “[i]n a patent system which allows claim amendments
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`

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`IPR2023-00485
`Patent 11,230,430 B2
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`and continuation applications longafter an initial application 1s filed”
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`becauseit ensures “that the patent owner may only exclude others from what
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`they had actually invented as ofthe priority date.” Columbia Insurance Co.
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`v. Simpson Strong-Tie Co., Inc., No. 2021-2145, 2023 WL 2733427, at *3
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`(Fed. Cir. Mar. 31, 2023) (non-precedential).
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`“To satisfy the written description requirement the disclosure ofthe
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`prior application must “convey with reasonable clarity to those skilled in the
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`art that, as of the filing date sou ght, the inventor wasin possession ofthe
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`invention.” PowerQasis, 522 F.3d at 1306 (quoting Vas-Cath Inc. v.
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`Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (brackets and emphasis
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`omitted)). Onemay show possession ofthe invention through “such
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`descriptive meansas words, structures, figures, diagrams, formulas, etc., that
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`fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107
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`F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be
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`used in haec verba, .. . the specification must contain an equivalent
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`description ofthe claimed subject matter. A description which renders
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`obvious the invention for which anearlier filing date is soughtis not
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`sufficient.” /d.
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`2.
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`The Parties’ Arguments
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`a)
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`Petitioner’s Arguments
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`Petitioner contends that the second Germanpriority application fails
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`to disclose the inventions claimed 1n the *430 patent because this application
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`lacks any disclosure of a capsule with “an upper end portion that has an
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`annular convexity and a lower end portion that has an annular concavity
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`relative to [a] central axis ofthe base element,”as recited in independent
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`claims land7. Pet. 42. According to Petitioner, the figures in this
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`10
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`IPR2023-00485
`Patent 11,230,430 B2
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`application only disclose a capsule with a flat cover that has no convexity.
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`Td. at 42-43.
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`Petitioner also asserts that the second Germanpriority application
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`fails to disclose placing a barcode on the bottom side of a flange in a device
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`having each ofthe remaining limitations of independent claims 1 and 7.
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`With respect to Figure 1, Petitioner asserts that this figureteaches or
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`suggests a capsule with an identifier that can be used to determine whether
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`the capsule is suitable for use with the machine, but contends the disclosed
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`embodiment “doesnotdisclose at least the claimed holding arms, dropping
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`box, barcode underthe flange, a capsule with an annular convexity and
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`annular concavity, or seal.” /d. at 40 (citing Ex. 1047, 37:27-30, 37: 14-19°;
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`Ex. 1003 4 149). With respect to Figure 2, Petitioner contendsthis figure
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`discloses “an alternative embodiment of a capsule with a barcode on the
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`edge area of the base element facing away from the membrane,”butfails to
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`disclose “at least the claimed holding arms, drop box, annular convexity and
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`concavity, seal, and indentations on the side wall ofthe capsule.” /d. at 41
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`(citing Ex. 1047, 38:11—27; Ex. 1003 9 151).
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`Petitioner further contends that Figures 16 and 17 (along with the
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`accompanying text) describe another embodimentof a capsule that is
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`designed with a “toothed ring” around the “outer region”ofthe flange,
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`whichPetitionerasserts is neither a barcode nor located on the bottom side
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`of the flange.
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`/d. at 41-42. Petitioner acknowledgesthat the text describing
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`Figure | explains how the identifier would influence the machine’s
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`® The parties cite to the page numbersin the lowerright cornerofthe
`reference, which were addedfor purposes ofthis proceeding. Ourcitations
`are to the native page numbers ofthe application, which beginsat page 30 of
`the Exhibit.
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`11
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`

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`IPR2023-00485
`Patent 11,230,430 B2
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`operation, and that the specification clarifies that this disclosure “applies to
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`all other examples,” but contends the text does not indicate to a person of
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`ordinary skill in the art that multiple identifier embodiments would be
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`combined with one another, such that the identifier disclosure ofFigures1
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`and 2 would be incorporated into the embodiments ofFigures 16—18. /d. at
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`40-41, 45 (citing Ex. 1047, 37:38—-38:9; Ex. 1003 4 150). Rather, according
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`to Petitioner, a person of ordinary skill in theart would haveto cherry-pick
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`features from disparate embodimentsto arrive at the subject matter ofthe
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`claims ofthe *430 patent. /d. at 45.
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`Finally, Petitioner notes that the dependent claims ofthe second
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`Germanpriority application recite various componentsofthe claimed
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`portion capsule, but contends these multiple-dependentclaimsfail to
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`disclose the claimed invention.
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`/d. (asserting that the multiple-dependent
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`claims “are only directed to a portion capsule, and fail to disclose any details
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`of the brewing system claimedin the *430 Patent”).
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`b)—Patent Owner’s Arguments
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`Patent Owner contendsthe Office has already settled the very same
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`priority issue Petitioner nowraises. Prelim. Resp. 32—33. In particular,
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`Patent Ownercontendsthat during prosecution of “related U.S. Application
`
`No. 17/547,363 ... , Examiner Chouinitially concluded that the German
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`application did not provide support.” /d. at 32. But, after the Examiner was
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`directed to the disclosure that “the identifier applies to all other examples,”
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`as wellas the disclosure ofthe embodimentdescribed in Figure 16, the
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`Examiner withdrewthepriority notification. /d. at 33—34 (citing Ex. 2010,
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`11).
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`Patent Ownerasserts that the Examiner’s conclusion with respect to
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`priority was correct and applies equally to the challenged claims ofthe ’430
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`12
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`

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`IPR2023-00485
`Patent 11,230,430 B2
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`patent. First, Patent Owner contends Figures 16—18 ofthe second German
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`priority application alone demonstrate possession ofthe claimed inventions.
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`Id. at 37. Patent Ownernotesthat in the description ofFigure 16 the
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`identifier can be “a... detection meansto be sensed by a detector” and used
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`to determine “whether the respective portion capsule is suitable for the
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`respective coffee machine.” /d. at 37—38 (quoting Ex. 1047, 34—36, 41).
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`Patent Ownerfurther notes that the second German priority application
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`generally states in another portion ofthe disclosure that “[t]he identifier is
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`further preferably a machine-readable print” such as a “barcode.” /d. at 43.
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`Thus, according to Patent Owner,oneofordinary skill in the art would have
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`understood that the “detection means”in Figures 16 and 17 couldbea
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`barcode that is located on the bottom side ofthe flange. /d. at 37-38, 42-43.
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`Patent Owneralso contendsthat the explanations ofFigures 1—18 are
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`expressly stated to “not have a limiting effect on the general concept ofthe
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`invention,” and after the general description ofthe invention, the application
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`states that “[w]hat has beensaid in relation to the identifier appliestoall
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`other examples.” /d. at 38 (citing Ex. 1047, 38). Accordingly, Patent Owner
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`concludesthat one of ordinary skill in the art would have understoodthat the
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`“detection means”in Figures 16—18 could be a barcode,as disclosed in
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`Figure 2.
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`/d. at 38, 42-43.
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`Patent Owneralso asserts that the claims ofthe second German
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`priority application provide written description support for the challenged
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`claims ofthe *430 patent. /d. at 38-39. According to Patent Owner, the
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`substance ofthe multiple-dependent claims demonstrates that the inventors
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`“contemplated that features from one embodimentwerenot confined solely
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`to that individual embodiment,” but rather “features of oneillustrative
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`13
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`IPR2023-00485
`Patent 11,230,430 B2
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`embodiment had applicability to other embodiments”and weretherefore
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`“combinable.” /d. at 39.
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`3.
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`Analysis
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`On this record, we agree with Petitionerthat Figures 1 and 2 of the
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`second German priority application do not disclose every limitation of
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`independent claims 1 and 7 of the *430 patent. Figure 1 does not depict a
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`barcode underthe flange, but rather the use ofraised areas on the side ofthe
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`capsule that act as an identifier. Ex. 1047, Fig. 1. Figure 2, coupled with its
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`associated description, might suggest that the barcode could be on the
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`portion ofthe base element facing away from the membrane,’ but this figure
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`does not disclose manyofthe other elements ofthe claim, including holding
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`arms, a drop box, annular convexity and concavity, anda pump to supply
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`waterto the single-serve capsule. Pet.41; Ex. 1047, 9:21—24, Fig.2.
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`Wealso determine that Patent Ownerdoesnotsufficiently
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`demonstrate that Figures 16—18 ofthe second Germanpriority application
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`provide adequate disclosures showingthat the inventors were in possession
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`” We question whether the second Germanpriority application supports
`placing a barcode underthe flange. The application states that the barcode
`could “be provided on that side ofthe peripheral region ofthe basic element
`which1s directed away from the membrane.” Ex. 1047, 9:21—24. This
`statementis rather ambiguousasto where the “peripheral region”1s that is
`“directed away from the membrane.” The text goes on to explain, however,
`that “[t]his barcode,” 1.e., the barcodethat is “directed away from the
`membrane,” “is read by a detector 13,” which in Figure 2 is oriented to read
`a barcode on the top surface ofthe flange. /d. at 9:25—26, Fig. 2. This
`suggests that the barcodeis not on the bottom side ofthe flange andthat
`arrow 15 is pointing to the outer portion ofthe peripheral region that is not
`covered by the membrane, and not necessarily the bottom ofthe flange.
`
`14
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`of the inventionsset forth in independent claims 1 and 7 of the ’430 patent. '°
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`First, the second Germanpriority application describes the use of “an
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`identifier” that is read by a “sensor/detection means” andthen comparedto a
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`stored identifier. Ex. 1047, 2:29-31. In Figure2 the identifier may bea
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`barcode and the detection meansis detector 13.
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`/d. at 9:11—26. In Figures
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`16-18, however, element 2.4.2 is not an identifier, but rather a “a form-
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`fitting and/or friction-fitting means and/or a detection means.” Id. at 12:22-
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`24 (emphasis added). As such,it is unclear how this disclosure would
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`demonstrate possession ofthe disputed claim limitation, when combined
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`with the other limitations of claims 1 and7as a whole.
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`Second,it is not evident that the toothed rings ofFigures 16—18 are on
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`the underside ofthe flange, as asserted by Patent Owner. Prelim. Resp. 42
`
`(asserting that a barcode “could be located on the bottom side ofthe flange
`
`instead ofthetoothed ring”); Prelim. Sur-reply 4. The secondGerman
`
`priority applicationstates that the “form-fitting and/or friction-fitting means
`
`and/or detection means 2.4.2” 1s located in the “outer region” ofthe
`
`peripheral region 2.4. Ex. 1047, 12:22—24. Weare directedto no evidence
`
`that this “outer region”is on the bottom ofthe flange, and Figures 16—18
`
`each appearto depict means 2.4.2 on, or forming, the outer circumference of
`
`the flange."! /d. at Figs. 16-18, 6:8—11 (noting that the toothed ring is
`
`provided “on the outer circumference ofthe periphery’).
`
`10 The parties dispute whether Figure 16 of the second Germanpriority
`application discloses annular convexity and concavity. Pet. 42—43; Prelim.
`Resp. 45—46; Prelim. Reply 4-5; Prelim. Sur-reply 4. At most, the parties
`identify a material issue of fact with respect to these two claim elements that
`is best resolved on a full trial record.
`'T At first blush, Figure 17A appears to show means2.4.2 undera portion of
`element 27 of the capsule. Ex. 1047, Fig. 17A; Prelim. Sur-reply 4
`
`15
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`Finally, it is not clear howabarcode could be usedin the devices
`
`depicted in Figures 16—18, which rely on toothed rings physically interacting
`
`with either the chamber, retaining arms, ora pinion. Ex. 1047, 12:22-31,
`
`13:8-18. The second German priority application explains that means 2.4.2
`
`physically interacts with retaming arms 30 (embodiments ofFigures 16 and
`
`17) or a pinon (embodimentofFigure 18), andifmeans 2.4.2 were not
`
`present in these embodiments, the capsule would either “drop through intoa
`
`waste container” or could not be inserted through the insertion shaft. /d. at
`
`12:22—27, 13:9-12, 13:16—35 (noting that in the embodimentdisclosed in
`
`Figure 18 a pinoninteracts with means 2.4.2 and only when means2.4.2 “is
`
`formed complementary to the teeth ofthe means” can the capsule be
`
`inserted). Patent Ownerdoesnotsufficiently explain how a barcode could
`
`replace means 2.4.2 in these embodiments and still retain the capsule within
`
`the device or allow the capsule to enter the insertion shaft.
`
`Patent Ownercontendsthe disclosure at the end ofthe description of
`
`Figure 1, specifically,“[w]hat has been said in relation to the identifier
`
`appliesto all the other examples,” demonstrates that the inventor
`
`contemplated using a barcode on the bottom side ofthe flange in every
`
`embodiment, including those depicted in Figures 16—18. Prelim. Resp. 38,
`
`42-43. The problem with this argumentis that “what has been said”up until
`
`this statementis only that a barcodeor otheridentifier may be used; thereis
`
`no disclosure ofusing a barcode on the bottom side ofthe flange. And,
`
`(asserting that Figure 17a “irrefutably depicts a view of the repeated toothed
`ring identifier on the bottom side ofthe flange”); see a/so Ex. 1001,
`Fig. 17A (providinga clearer depiction ofthe capsule). The text makes
`clear, however, that element 27 is part of the brewing chamber, and not the
`capsule. Ex. 1047, 12:27—31, 13:5—8, 13:21—26, 15:36. Thus,it is not
`evident that the toothed ring is in fact on the bottom side ofthe flange.
`
`16
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`given that this statement comesat the bottom ofthe description ofFigure 1,
`
`on the current record, it appears logicalthatit is the description ofusing an
`
`identifier in Figure 1 to establish whethera portion capsule is suitable for
`
`use in a particular brewing chamberthatis applicable to all the other
`
`examples, not that every discussion ofidentifiers or their location found in
`
`the application applies equally to every embodiment.
`
`Finally, Patent Owner’s argumentthat the claims ofthe second
`
`Germanpriority application suggest that the inventors contemplated various
`
`combinationsof disclosed elements, such as the barcode ofFigures 1 and 2
`
`and the beverage-machine elements ofFigures 16—18, is unavailing. The
`
`multiple-dependent claims ofthe second Germanpriority application create
`
`a complex web of combinationsthat provides few clear “blaze marks”
`
`leading oneofordinary skill in the art to the clatmedinventions. In addition,
`
`we are directed to no combination of claims in the second German priority
`
`application that would lead oneof ordinary skill in the art to place a barcode
`
`on the underside ofthe flan ge in the claimed beverage systems.
`
`4.
`
`Conclusion with Respect to Written Description Support
`
`For the reasonsdiscussed above, Patent Ownerhas not demonstrated
`
`that the second Germanpriority application provides written description
`
`support forthe challenged claims. Thus, on this limited record, Patent
`
`Ownerhas not demonstrated that the ’430 patentis entitled to the benefit of
`
`the priority date ofthe second German priority application.'* See Inre NTP,
`
`654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claimsare not
`
`2 This determination is preliminary. The parties may further develop the
`record duringtrial on the issue ofwhether any ofthe German priority
`applications provide sufficient written description support for the challenged
`claims.
`
`17
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`entitled to an earlier priority date merely because the patentee claimspriority
`
`... Rather, fora patent’s claimsto be entitled to an earlier priority date, the
`
`patentee must demonstrate that the claims meet the requirements of
`
`35 U.S.C. § 120”). Accordingly, we apply Jarisch aspriorart to the *430
`
`patent.
`
`D.
`
`Claims 1—10 over Yoakim, Jarisch, Rossi, and Castellani
`
`Petitioner contends the subject matter of claims 1-10 would have been
`
`obvious over the combined disclosures of Yoakim, Jarisch, Rossi, and
`
`Castellani. Pet. 46-81.
`
`1.
`
`Yoakim
`
`Yoakim is titled “Method for Preparing a Beverage or Food Liquid
`
`and System Using Brewing Centrifugal Force” and published September 23,
`
`2010, from an application filed May 7, 2010. Ex. 1004, codes (54), (43),
`
`(22). Yoakim “relates to a capsule, device, system and methodfor preparing
`
`a beverage or food liquid from a food substance which1s brewed or
`
`extracted by using centrifugal forces exerted on a capsule which contains the
`
`substance.” /d. 2.
`
`Yoakim’s beverage device includes a sensorto read an identifierthat
`
`is used to select predetermined parameters for a particular capsule. /d. §25.
`
`For example, “a capsule recognition system” may “recognize thetypes of
`
`capsules, i.e., espresso, lungo, cappuccino, long coffee (e.g., 180-400 ml),
`
`latte, tea, etc.,and... adjust the speed and/or other brewing parameters
`
`(e.g., water temperature)” based on the type of capsule inserted into the
`
`device.
`
`/d. 4192. The identifier may be a code on the capsule, “suchas a
`
`color, a barcode, an RFID, a magnetic code, ferromagnetic micro-wires or
`
`labels, shapes and combinationsthereof.” /d.
`
`18
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`Wereproduce Yoakim’s Figure 1, below.
`
`
`
`Figure | depicts “a schematic representation of [Yoakim’s] system.”
`
`Ex. 1004 430. System 1 includes device 2 and capsule 3, with device 2
`
`having brewing module 4 that receives capsule 2 for brewing. /d. 4 180.
`
`Module 4 is connected to water reservoir 5, with the waterdelivered to
`
`module4 by low pressure pump 6.
`
`/d. Water heater 7 heats the water to the
`
`desired temperature for the capsule. /d. After brewing is complete, the
`
`capsule is removed and discarded. /d.
`
`19
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`Figures 6 and 27 of Yoakim are reproducedbelow:
`
`
`
`Figure 6 depicts a sealed capsule that can be used in the invention and
`
`Figure 27 is a perspective view from below ofthe capsule ofthe invention.
`
`Id. 9§ 35,56. In Figure 6, capsule 7 comprises a cup-shaped body 70 having
`
`upwardly oriented sidewall 76 anda bottom wall 77. Jd. § 197. “The body
`
`terminates by an upper edge 72 raising outwards onto which1ssealed a lid
`
`71,” which maybe “a flexible pierceable membrane of several microns in
`
`aluminum and/orplastic.” /d.
`
`In Figure 27, the capsule comprises a dished body 102, onto which
`
`sealing foil 103 (not shown)is sealed to peripheral rim 104 ofthe body.
`
`/d.
`
`4,414. Yoakim explains that “rim 104 can extend outwards forming a small
`
`annularportion, e.g., of about 2-5 mm.” /d.
`
`20
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`Figure 4 of Yoakim 1s reproducedbelow:
`
`Figure 4 is a detailed cross-sectional view ofthe system of one invention of
`
`Yoakim.
`
`/d. 9/33. Inthe device depicted in Figure 4, capsule holder 41 is
`
`associated with a central rotating rod 45 mounted along a lowerbearing 43.
`
`Id. { 187. Aseries of needles 51 are positioned on lid 40 to form small
`
`perforations at the periphery ofthe upper side of a capsule. /d. Whenthe
`
`needles are engagedin the capsule, the lid is driven in rotation by the
`
`capsule and rotor 45.
`
`/d. Yoakim explains that the higher the rotational
`
`speed, the moreradial pressure 1s exerted in the capsule by the liquid and the
`
`more the substance is compacted on the sidewall ofthe capsule. /d.
`
`2.
`
`Jarisch
`
`Jarischis titled “Capsule, System and Method for Preparing a
`
`Beverage by Centrifugation” and published March 14, 2013 from an
`
`21
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`application filed May 12, 2011. Ex. 1005, codes (22), (43), (54). Jarisch is
`
`directed to the preparation of a beverage using a capsule and,in particular,
`
`“focuses on the detection ofthe capsule.” Jd.

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