Trials@uspto.gov
`571-272-7822
`
`Paper 26
`Date: September 10, 2024
`
`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
`JAMES J. MAYBERRY,Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`I. INTRODUCTION
`
`Nespresso USA,Inc. (‘‘Petitioner’’) filed a Petition (Paper 1, “Pet.’’)
`
`requesting an inter partes review of claims 1—10 of U.S. Patent No.
`
`11,230,430 B2 (Ex. 1001, “the ’430 patent”). K-fee System GmbH (‘Patent
`
`Owner’’) filed a Preliminary Responseto the Petition. Paper 6 (Prelim.
`
`Resp.”). With authorization, Petitioner subsequently filed a reply to the
`
`Preliminary Response (Paper 7) to which Patent Ownerfiled a sur-reply
`
`(Paper8).
`
`Uponreview of the parties’ arguments and supporting evidence, we
`
`instituted review with respect to the single ground asserted in the Petition.
`
`Paper 9 (“Institution Decision”or “Inst. Dec.”). After institution, Patent
`
`Ownerfiled a Response (Paper 15, “PO Resp.”’), to which Petitionerfiled a
`
`Reply (Paper 18, “Pet. Reply”), and Patent Ownerfiled a Sur-reply (Paper
`
`19, “Sur-reply”’).
`
`Petitioner relies, inter alia, upon a declaration from Michael Jobin
`
`(Ex. 1003), and Patent Ownerrelies upon a declaration from Laurens Howle,
`
`Ph.D., P.E. (Ex. 2017).
`
`An oral hearing was held on June 12, 2024, and a transcript of the
`
`hearing is included in the record (Paper 25, “Tr.”).
`
`For the reasonsthat follow, we conclude that Petitioner has proven by
`
`a preponderanceof the evidence that claims 1-10 of the ’430 patent are
`
`unpatentable.
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`A. Related Matters
`
`Il. BACKGROUND
`
`The parties identify the following district court proceedingasa related
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`matter: K-Fee System GmbH vy. Nespresso USA, Inc., No. 2:22-00525-GW
`
`(C.D. Cal.). Pet. 82; Paper 3, 2.
`
`B. Real Parties in Interest
`
`Petitioner identifies itself, Nestlé USA, Inc., Nestlé Nespresso SA,
`
`and Société Des Produits Nestlé SA as the real parties in interest. Pet. 82.
`
`Patent Owneridentifies itself as the real party in interest, and notes
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`that it is “a wholly owned subsidiary of Kruger GmbH & Co. KG,along
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`with Kruger North America, Inc.” Paper 3, 2.
`
`C. The ’430 patent
`
`The °430 patentistitled “Portion Capsule Having an Identifier,” and
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`issued January 25, 2022, from an application filed July 26, 2021. Ex. 1001,
`
`codes (22), (45), (54). Figures 2A and 2B ofthe ’430 patent are reproduced
`
`below.
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`
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`Figures 2A and 2B depict “a portion capsule containing a barcode.” J/d. at
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`7:31-32.! As shown in Figure 2A above,portion capsule 1 includes base
`
`element 2 with wall region 2.1 and bottom area 2.2. /d. at 8:44—47.
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`Membrane4 is attached to edge region 2.4 and seals the cavity of the
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`capsule.
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`/d. at 8:11—-13. Barcode 50 is placed “in the area of the
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`membrane’s top surface.” /d. at 8:47-48. Alternatively, as shown by arrow
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`15, the barcode “can be attached to the base element’s edge region being
`
`averted from the membrane 4.” /d. at 8:54—56. This barcode is used as an
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`identifier and is read by detector 13 (Figure 2B), whichis placed, for
`
`example, in a media chute. /d. at 8:56—-58.
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`Figures 16A and 17A are reproduced below.
`
`GSKA
`
`SiettsPIE.
`
`' For ease of reference, we have rotated Figures 2A and 2B by 180 and 90
`degrees, respectively,
`
`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`
`
`Figure 16A? depicts “a portion capsule with a gearwheelplacedin the
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`brewing chamber,” and Figure 17A depicts a different embodimentof the
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`portion capsule of Figure 16A. Ex. 1001, 7:58-61. These figures show
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`“flange 17/edge region 2.4, which 1s preferably circular” and includes a
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`“meansforfit 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 1s a gearwheelthat is formed by several recesses/bulges evenly
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`arranged in the edge region of portion capsule 1. /d. at 10:24—-28. Holding
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`arms 30 (Figure 17A), in combination with brewing chamber 27, hold
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`portion capsule | in place.
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`/d. at 10:41-43. Holding arms30 interact with
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`“means for locking, friction locking and/or detection 2.4.2.” Jd. at 10:43-45.
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`The ’430 patent explains that without means 2.4.2 the holding arms will not
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`hold the portion capsule, the portion capsule cannot be inserted into the
`
`brewing chamber, and the capsule will instead “fall through it into a
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`dropping box.” /d. at 10:45—48.
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`* Figure 16A has been rotated 90 degrees for ease of reference.
`
`5
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`

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`IPR2023-00485
`Patent 11,230,430 B2
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`D. Illustrative Claim
`
`Petitioner challenges claims 1—10 of the ’430 patent. Pet. 1. Claims 1
`
`and 7 are independent. Claim 1, reproduced below,is illustrative of the
`
`challenged claims:
`
`1. A beverage system for making a beverage, comprising:
`a single-serve capsule comprising: a base element with a cavity, in
`which ataw beverage material is provided; a flange extending
`outwardly from the base element, the flange comprising atop side
`and an opposing bottom side; a cover that is fastened to the top
`side of the flange to close the cavity, and a barcode providedoj
`the bottom side ofthelange; and
`
`a beverage machine comprising: a sensor/detector configured to
`read the barcode, a brewing chamber configured to receive the
`base clement of the smgle-serve capsule and having an end portion
`that opposes the bottom side of the flange; and a pump controlled
`to supply water into the single-serve capsule;
`
`wherein the sinvle-serve capsule is free ofafilter that is located
`inside ofthe cavity, the single-serve capsule also comprises:
`
`i. anh upper end portion that has an annular convexity and a
`lower end portion that has an annular concavityrelative to a
`central axis of the base element; and
`
`i. a barrier layer to prevent moisture or aroma fromescaping
`out of the single-serve capsule,
`
`wherein the beverage machime also comprises:
`
`i. amandrel that is configured to pierce the cover in a region
`that is offset fromthe central axis of the base element;
`
`i. a seal that that is configuredto seal agamst the cover ma
`region between a peripheral edge of the flange and the region
`of the cover that is prerced by the mandrel;
`
`i. a pat of holding arms for engaging the single-serve
`capsule: and
`
`iv. a dropping box for the single-serve capsule to fall into;
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`wherein thepunip is controlled to push the water tite the single-
`serve capsule only upon a determination that the read barcode
`aerees with a stored reference,
`
`Ex. 1001, 12:58—13:28 (claim terms at issue herein are emphasized in
`
`italics).
`
`FE. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1-10 of the ’430 patent are unpatentable
`
`on the following ground (Pet. 33):
`
`
`
` 4
`Yoakim*, Jarisch°’, Rossi®,
`
`Castellani’
`
`Il. ANALYSIS
`
`A. Legal Standard
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and “the prior art are such
`
`that the subject matter, as a whole, would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`> The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. The parties assert that the challenged claims have an earliest effective
`filing date of either July 22, 2011, or September 2, 2010. Pet. 38-39;
`PO Resp. 54. Accordingly, we apply the pre-AIA version of § 103. See
`35 U.S.C. § 100(4)(1)(B).
`* US 2010/0239734 A1, published September 23, 2010. Ex. 1004
`(“Yoakim”).
`> US 2013/0064937 A1, published March 14, 2013. Ex. 1005 (‘Jarisch”).
`© WO 2010/099806 A1, published September 10, 2010. Ex. 1041 (“Rossi”).
`TUS 2008/0105131 A1, published May 8, 2008. Ex. 1009 (“Castellani”).
`
`7
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations including: (1) the scope and contentof the priorart;
`
`(2) any differences between the claimed subject matter and the priorart;
`
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`B. Level ofOrdinary Skill in the Art
`
`The Petition contends that a person of ordinary skill in the art “would
`
`have a bachelor’s degree in engineering plus five years of experience in
`
`design of mechanical beverage systems, or similar products.” Pet. 31 (citing
`
`Ex. 1003 4 40). In the Institution Decision, we preliminarily determinedthat
`
`a person of ordinary skill in the art “would have 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
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`recognizing an identifier.” Inst. Dec. 8 (emphasis added). Neither party
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`disputes this conclusion. PO Resp. 9; see generally Pet. Reply. As such, we
`
`adopt our preliminary definition of the ordinarily skilled artisan for purposes
`
`of this Final Written Decision.
`
`C. Claim Construction
`
`In an inter partes review proceeding, a patent claim is construed using
`
`the same claim construction standard that would be used to construe the
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`claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as
`
`amended Oct. 11, 2018). This rule adopts the claim construction standard
`
`used by Article III federal courts, which follow Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Underthis standard,
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`the words of a claim are generally given their “ordinary and customary
`
`meaning,” which is the meaning the term would have to a person of ordinary
`
`skill at the time of the invention, in the context of the entire patent including
`
`the specification. See Phillips, 415 F.3d at 1312-13.
`
`Uponreview of the prior art of record, we agree with the parties that
`
`no claim terms require express construction for purposesof this Final
`
`Written Decision. Pet. 33 (“Petitioner submits that, for this proceeding, no
`
`claim terms require formal construction.”); PO Resp. 8 (proposing no formal
`
`constructions); see Realtime Data, LLC v. lancu, 912 F.3d 1368, 1375
`
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms...
`
`that are in controversy, and only to the extent necessary to resolve the
`
`controversy.”
`
`) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999)).
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`D. Weight Accorded to Conflicting Opinion Testimony
`
`Petitioner submits that Patent Owner’s witness, Dr. Howle, lacks the
`
`minimum qualification of the ordinarily skilled artisan related to at least
`
`“five years of experience in design of mechanical beverage systems, or
`
`similar products, as well as experience with sensors for recognizing an
`
`identifier.” Pet. Reply 27-28. Based onthefull trial record, we agree.®
`
`® The Board previously determined, under similar facts and circumstances,
`that Dr. Howle does not possess the minimum level of ordinary skill in the
`art because he lacks “five years of experience in design of mechanical
`beverage systems, or similar products, as well as experience with sensors for
`recognizing an identifier” and, on that basis, is not qualified to opine about
`the understanding of the ordinarily skilled artisan. IPR2022-01574, Paper 29
`at 22.
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
`
`For the past 35 years, Dr. Howle has held academicroles at Duke
`
`University, first as a graduate-level research assistant, then as a professor in
`
`the Department of Mechanical Engineering. Ex. 2017 99 5—7, App’x 1-2.
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`Prior to his time at Duke, Dr. Howle was employed for seven years by Kaye
`
`Products, where his duties related to physical therapy equipment.
`
`/d. ¥ 3.
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`Before that, he served for four years in the United States Army. /d.,
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`App’x l.
`
`Dr. Howle readily admits he lacks five years of experience designing
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`mechanical beverage systems. Ex. 1069, 53:15—18. Yet Dr. Howle doesnot
`
`explain sufficiently, if at all, how any related design experiences,in the
`
`ageregate, add up to “at leastfive years of experience in design of .
`
`.
`
`.
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`similar products.” See Ex. 2017 F§ 2-13, App’x 1-3 (statement of
`
`qualifications and experience). Dr. Howle simply identifies experiences,
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`which may or may not havebeenrelated to the design of similar products,
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`then asserts, in conclusory fashion, that he qualifies as an ordinarily skilled
`
`artisan. /d. J] 2-13; see especially id. | 14. We assign that conclusory
`
`statementlittle weight because the statement is not explained or supported
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`adequately by objective evidence. /d. § 14.
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`Noneof the experiences identified by Dr. Howleare self-explanatory;
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`that is, none, on their face, support a conclusion that his experiences, in the
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`aggregate, amount to “at least five years” (Inst. Dec. 8) of experience
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`designing products similar to mechanical beverage systems. See Ex. 1017
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`44, 2-13. Dr. Howle identifies a single experience as “[d]irectly related to
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`single-serve beverage brewing systems,” but that qualification is outside the
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`realm of design: It relates to his experiences consulting as an expert witness
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`in litigation. /d. 13. In short, Dr. Howle does not attempt to accountfor
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`10
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`

`IPR2023-00485
`Patent 11,230,430 B2
`
`how his experiences add up to “at least five years” designing products
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`“similar” to mechanical beverage systems.
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`Dr. Howle’s research interests include, for example, decompression
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`sickness and oxygentoxicity, and do not, on their face, support a finding that
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`he spentat least five years designing beverage brewing systems or similar
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`products. Ex. 2017, App’x 2—3 (statement of research interests). Similarly,
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`Dr. Howle’s peer-reviewed publications reflect a distinct focus on marine
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`mammal science, such as lift and drag performance of whale flippers.
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`/d. at
`
`App’x 6. Patent Ownerdoesnotdirect us to information from which we can
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`determine whether Dr. Howle possessesat least five years of experience in
`
`the design of mechanical beverage systemsor similar products. See
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`Pet. Reply 27—28 (Petitioner’s arguments); Sur-reply 1—5 (Patent Owner’s
`
`arguments)”.
`
`In the Sur-reply, Patent Ownerfor the first time argues that
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`Dr. Howle’s “educational experiences”are “‘a substitute for” the required
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`“design experience.” Sur-reply 2 n.2. We reject that argument because
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`Patent Ownerfailed to timely contest its own proposed definition of the
`
`ordinarily skilled artisan in its Response and, as a result, Petitioner was
`
`denied an opportunity to brief this new issue raised for the first time in the
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`Sur-reply. Patent Owner’s own proposeddefinition, advanced in the
`
`Preliminary Response and adoptedin the Institution Decision, expressly
`
`distinguishes educational experiences from hands-on design experience.
`
`” Even if we accept that Dr. Howle was deemed qualified, “without
`objection,” in district court actions, that does not compensate for his failure
`to establish his qualifications in this proceeding under the definition
`proposed by Patent Owner and adopted by the Board, wherehis
`qualifications are contested. Sur-reply 4.
`
`11
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`

`

`IPR2023-00485
`Patent 11,230,430 B2
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`Inst. Dec. 8 (accepting Patent Owner’s proposed definition) (quoting Prelim
`
`Resp. 18). The time for advocating for a different definition was on the date
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`of filing Patent Owner’s Response. See PO Resp. 9 (apparently adopting the
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`definition proposed in the Institution Decision).
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`In the Sur-reply, Patent Owner also contendsfor the first time that
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`Dr. Howle’s work with devices, such as heaters, pumps, and gauges,
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`represents “experience in mechanical design including design of components
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`used in mechanical beverage systems, and design of similar products.”
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`Sur-reply 2 (Patent Owner’s emphasis). Patent Owner doesnot explain how
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`these experiences together add up to “at least five years” of designing
`
`products similar to mechanical beverage systemsas well as “experience with
`
`sensors for recognizing an identifier.” Inst. Dec. 8; see Sur-reply 2—4
`
`(providing a survey of Dr. Howle’s qualifications, including work plainly
`
`outside the realm of such design experiences, but declining to address how
`
`those qualifications include at /eastfive years of relevant design experience)
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`(citing Ex. 1066, 34:16—35:9; Ex. 1067, 101:3-12, 101:19-102:11, 102:20-
`
`104:9; Ex. 1068, 6:3-12; Ex. 1069; Ex. 2017 9 3-6, 8-10, 13) (Patent
`
`Owner’s evidence).
`
`Patent Owner’s attempt to establish Dr. Howle’s qualifications in the
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`Sur-reply, based on re-direct examination taken by Patent Ownerduring
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`Petitioner’s deposition of Dr. Howle, is too little too late. Sur-reply 3 (citing
`
`Ex. 1067, 102:20-104:9). Specifically, Petitioner avers in the Sur-reply, for
`
`the first time, that “Dr. Howle [] has extensive experience with medical
`
`devices, which utilize’ componentsthat “operate similarly to beverage
`
`machines.” /d. Even if we consider that belated argument, however, it does
`
`nothing to establish that Dr. Howle possesses, in the aggregate, “at least five
`
`years” of relevant design experience. Inst. Dec. 8; see Sur-reply 3 (citing
`
`12
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`

`IPR2023-00485
`Patent 11,230,430 B2
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`Ex. 1066, 34:16—35:9; Ex. 1067, 101:3—12, 102:30—104:9; Ex. 2017 79 3-4)
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`(declining to address the duration of Dr. Howle’s allegedly relevant design
`
`experience).
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`Further, by raising that contention for the first time in the Sur-reply,
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`Patent Owner unfairly denies Petitioner an opportunity to oppose the
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`contention with facts and evidence. See Genzyme Therapeutic Prods., 825
`
`F.3d at 1366-1367 (Fed. Cir. 2016) (Administrative Procedure Act and due
`
`process require notice and opportunity to submit facts and argument). The
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`evidence filed in support of Patent Owner’s Response doesnot indicate that
`
`Dr. Howle possesses design experience with medical devices. Ex. 2017
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`4] 2-13, App’x A. Patent Owner’s attempt to introducethis alleged
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`experience in the Sur-reply, in the first instance, is improper and prejudicial
`
`to Petitioner’s ability to effectively respond with facts and evidence.
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`In summary, even if we accept that Dr. Howle has some experience
`
`designing medical devices and components, and that those experiences
`
`represent work designing products similar to mechanical beverage systems,
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`Patent Ownerfails to direct the Board to evidence sufficient to establish that
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`this experience, in the aggregate, amountsto at least “five years” or involved
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`“experience with sensors for recognizing an identifier.” Inst. Dec. 8
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`(adopting Patent Owner’s own proposeddefinition of one of ordinary skill in
`
`the art); see Sur-reply 3-4 (citing Ex. 1066, 34:16—35:9; Ex. 1067, 101:3—
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`12, 102:20—104:9; Ex. 2017 44 3-4, 8-10) (failing to establish adequately, if
`
`at all, how Dr. Howle’s qualifications include the requisite minimum five-
`
`year period of relevant design experience). Accordingly, we determine that
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`Dr. Howleis not qualified to offer expert testimony from the perspective of
`
`13
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`

`IPR2023-00485
`Patent 11,230,430 B2
`a person having ordinary skill in the art in this proceeding.'° See Kyocera
`
`Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F 4th 1369, 1376-77
`
`(Fed. Cir. 2022).
`
`The Federal Circuit has explained that “[t]o offer expert testimony
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`from the perspective of a skilled artisan in a patent case,” including the issue
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`of patent “validity,” the “witness must at least have ordinary skill in the art.”
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`Id. (Board’s emphasis). “Without that skill, the witness’[s] opinionsare
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`neither relevant nor reliable.” /d. at 1377.
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`Even if Dr. Howle possessed“at least five years” of relevant design
`
`experience, on this record, we agree with Petitioner that his opinionsare
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`entitled to less weight than those of Petitioner’s witness, Mr. Jobin.
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`Pet. Reply 28. Unlike Dr. Howle, Mr. Jobin is a designer by profession,
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`with more than 30 years of directly-relevant industry experience.
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`/d. (citing
`
`Ex. 1003 4 5-30). For example, Mr. Jobin designed a home-based beer
`
`dispensing system utilizing cartridge identification technologies. /d. (citing
`
`Ex. 1003 4 24). Mr. Jobin “has substantial experience with sensors for
`
`recognizing identifiers.” /d. (citing Ex. 1003 § 19; Ex. 2018, 37:12-19,
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`'© To be clear, we are not saying that a witness supplying expert opinions
`must have satisfied the requirements of the level of ordinary skill in the art
`on or before the priority date of the challenged patent, which Patent Owner
`seems to understand. See Sur-reply 4—5. Instead, we evaluate whether
`Dr. Howle hadat least the requisite qualifications of a person having
`ordinary skill in the art by the time he rendered his opinions. Osseo
`Imaging, LLC vy. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7
`(Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later
`and develop an understanding of what a person of ordinary skill knew at the
`time of the invention,” however, the fact that “the expert was not a person of
`ordinary skill at the time of the invention may well be used during cross-
`examination to undermine the credibility of the expert.”); see id. at 5—6
`(affirmatively quoting Kyocera).
`
`14
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`IPR2023-00485
`Patent 11,230,430 B2
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`67:22—70:19). Dr. Howle, by contrast, prior to his litigation experience, “did
`
`not research or design beverage systems.” /d. at 28.
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`Dr. Howlepossesses excellent credentials as a professor in the general
`
`field of mechanical engineering, but his relevant design experience1s sparse
`
`and insubstantial compared to Mr. Jobin. Compare Ex. 1003 49 5-30, App’x
`
`A, with Ex. 2017 Jj 1-15, App’x A. Therefore, even if we assign some
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`weight to Dr. Howle’s opinions, where they conflict with those of Mr. Jobin,
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`we assign Mr. Jobin’s testimony “more weight.” '! Pet. Reply 28.
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`Moreover,for the critical, disputed limitations discussed below, we credit
`
`the testimony of Mr. Jobin because it is more compelling and more
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`consistent with the prior art of record than that of Dr. Howle, regardless of
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`either declarants’ design experience.”
`
`E. Priority Date of the ’430 Patent
`
`The ’430 patent claimspriority to a series of United States patent
`
`applications, the earliest of which wasfiled July 22, 2011. Ex. 1001, code
`
`(60). The °430 patent also claims priority to three German patent
`
`applications.
`
`/d. at code (30). The first German priority application was
`
`"| With his declaration, Dr. Howle providescitations to multiple references
`to support his positions. We have considered the content of these references
`and how they apply to the parties’ arguments. That said, where there is any
`ambiguity in the references, the fact that Dr. Howle cannottestify as to how
`one of ordinary skill in the art would understand these references, or at least
`cannot do so with the same impact as Mr. Jobin, this tends to cut against
`Patent Owner’s arguments.
`® Even if Dr. Howle metthe qualifications of one of ordinary skill in theart,
`for the reasonsset forth below, we wouldarrive at the same conclusion,1.e.,
`that the challenged claims would have been obviousover the combined
`disclosures of Yoakim, Jarisch, Rossi, and Castellani.
`
`15
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`

`IPR2023-00485
`Patent 11,230,430 B2
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`filed July 22, 2010, the second Germanpriority application wasfiled
`
`September 2, 2010 (Ex. 1047, “second German priority application’’), and
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`the third 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 extent that the ’430 patent
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`is not entitled to receive the benefit of the priority date of one or more of the
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`three German priority applications, Petitioner contends that Jarisch is 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 entitled to the benefit of the filing date of the second German
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`priority application, which we address below. Pet. 38-46; PO Resp. 35-66.
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`1. Legal Framework
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`“It is elementary patent law that a patent application is entitled to the
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`benefit of the filing date of an earlier filed application only if the disclosure
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`of the earlier application provides support for the claims ofthe later
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`application, as required by 35 U.S.C. § 112.” Jn re Chu, 66 F.3d 292, 297
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`(Fed. Cir. 1995). One may show supportfor the claims of a later application
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`by showingthat the earlier application provides written description support
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`for the clams. PowerOasis, 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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`and continuation applications long after an initial application 1s filed,” it
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`ensures “that the patent owner may only exclude others from what they had
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`actually invented as of the priority date.’ Columbia Insurance Co. vy.
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`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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`16
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`IPR2023-00485
`Patent 11,230,430 B2
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`“To satisfy the written description requirement the disclosure of the
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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 sought, the inventor was in possession of the
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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)) (internal marks
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`omitted). One may showthatit is in possession of the invention through
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`“such descriptive means as words,structures, figures, diagrams, formulas,
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`etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines,
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`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need
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`not be used in haec verba,.. . the specification must contain an equivalent
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`description of the claimed subject matter. A description which renders
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`obvious the invention for which an earlier filing date is sought 1s not
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`sufficient.” /d.; see Novozymes A/S v. DuPont Nutrition Biosciences APS,
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`723 F.3d 1336, 1349 (Fed. Cir. 2013) (noting that written description
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`support cannot be provided by merely pointing to “an amalgam of
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`disclosures pluckedselectively” from the priority document); Ariad
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`Pharms., Inc. yv. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
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`(en banc) (“We have madeclear that the written description requirement
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`does not demandeither examples or an actual reduction to practice; a
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`constructive reduction to practice that in a definite way identifies the claimed
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`invention can satisfy the written description requirement.”) (emphasis
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`added); see also Flash-Control, LLC vy. Intel Corp., 2021 WL 2944592, *4
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`(Fed. Cir. 2021) (explaining that to provide written description support “the
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`specification must present each claim as an ‘integrated whole’”
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`) (quoting
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`Novozymes, 723 F.3d at 1349).
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`17
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`IPR2023-00485
`Patent 11,230,430 B2
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`2. The Parties’ Arguments
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`a. Patent Owner’s Arguments
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`Patent Ownerbears the burden of demonstrating entitlement to the
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`benefit of an earlier filing date. See In re NTP, 654 F.3d 1268, 1276 (Fed.
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`Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier
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`priority date merely because the patentee claims priority ... Rather, for a
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`patent’s claims to be entitled to an earlier priority date, the patentee must
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`demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). In
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`support of its priority arguments, Patent Ownerprovides a claim chart
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`identifying where it contends the second German application discloses the
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`subject matter of independent claim 1.'° PO Resp. 43-53
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`As a preliminary matter, Patent Owner contends the USPTO has
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`already settled the very samepriority issue Petitioner now raises. PO Resp.
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`35-36. In particular, Patent Owner contends that during prosecution of
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`“related U.S. Application No. 17/547,363 ... Examiner Chouinitially
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`concluded that the Germanapplication did not provide support.” /d. at 36.
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`But, after the Examiner was directed to the disclosure of the embodiment
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`described in Figure 16, as well as the disclosure that “the identifier applies to
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`all other examples,” the Examiner withdrewthe priority notification.
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`/d.
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`(citing Ex. 2010, 11). Patent Owner contends Examiner Chou cameto
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`'S Although Patent Ownerseeksthe benefit of the filing date of the second
`Germanapplication for claims 1—10, it does not address the subject matter of
`claim 2—10, muchless identify where these claims find support in the
`priority documents. PO Resp. 54 (“The sameis true for every limitation of
`every other claim of the ’430 Patent.”). Thus, even if claim 1 were shown to
`have written description support in the second German application, Patent
`Ownerhas not persuasively demonstrated that claims 2—10 likewise find
`sufficient written description support in any earlier-filed application.
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`18
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`IPR2023-00485
`Patent 11,230,430 B2
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`similar conclusions during prosecution of two other related applications
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`(U.S. Application No. 17/670,629 and U.S. Application No. 17/670,765).
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`Id. (citing Ex. 2015, 2; Ex. 2014, 2). And, during prosecution of a related
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`patent, Patent Owner contends Examiner Jennison concluded that “[t]he
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`priority dates of the applications, and prior art cited, under Pre-AIA were
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`verified.” /d. at 38 (citing Ex. 2003, 2).
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`Patent Ownerasserts that the Examiners’ conclusions with respect to
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`priority were correct. PO Resp. 38. First, Patent Owner contends the
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`embodimentdisclosed in Figures 16—18 of the second Germanapplication
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`alone demonstrates possession of the claimed invention. /d. Patent Owner
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`notes that in the embodimentdepicted in Figure 16 an identifier can be used
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`to identify an inserted capsule andthis identifier can be “a. .
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`. detection
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`meansto be sensed by a detector”that indicates “whether the respective
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`portion capsule is suitable for the respective coffee machine.” /d. at 39-40
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`(citing Ex. 1047, 34-36, 41, Fig. 16). According to Patent Owner, earlier
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`disclosures in the written description indicate that an identifier may take the
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`form of a “machine-readable barcode,” on either the top or bottom of the
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`flange. /d. at 40.
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`Although it looks to combine different embodiments for the disclosure
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`of using a barcode on the bottom of the flange, Patent Owner contends the
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`second Germanapplication indicates that the various identifiers disclosed in
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`the application are combinable with all of the disclosed embodiments.
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`PO Resp. 39-40. Patent Ownerreasonsthat in discussing different
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`examples of identifiers and how they maybe usedin the disclosed
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`embodiments, the second German application states “[w]hat has been said in
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`relation to the identifier applies to all other examples.” /d. at 40 (quoting
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`Ex. 1047, 38). Then, in the very next example (relying on Figure 2), the
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`19
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`IPR2023-00485
`Patent 11,230,430 B2
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`second Germanapplication provides additional disclosure regarding the
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`location of the identifier on the capsule.
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`/d. Moreover, Patent Owner
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`contends that the multiple-dependent claims of the second German
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`application demonstrate that the various disclosed features were intended to
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`be combinable.
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`/d. at 40-42.
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`b. Petitioner’s Arguments
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`Petitioner contends that Figure 16 of the second Germanapplication
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`does not disclose a barcode on the “bottom side of the flange,” but rather a
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`“form-fitting and/or friction-fitting means and/or a detection means”that
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`takes the form of a “toothed ring”that is placed on the “outer region”or
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`“outer circumference”of the flange. Pet. Reply 1—2 (citing Ex. 1047,
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`41:17-27, 35:9-11, Fig. 18; Ex. 1001, 10:22—24). Petitioner further
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`contendsthat, in Figures 16-18, element 2.4.2 is always in the form of a
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`toothed ring or gearwheel, and 1s never linked with other types of identifiers.
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`Id. at 3 (citing Ex. 1047, 31:29-31, 37:30-35, 38:34—-38). According to
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`Petitioner,it is illogical for element 2.4.2 to take the form of a barcode in
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`Figure 16 because element 2.4.2 interacts with retaining arms 30, and if a
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`toothed ring or gearwheelis not present, the arms will not retain the capsule.
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`Id. at 4 (citing Ex. 1047, 42:5-12).
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`Petitioner asserts that the statement “[w]hat has been said in relation
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`to the identifier applies to all of the other examples” merely indicates that
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`the description of the machine’s operation after reading an identifier applies
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`to all the other identifier examples—“not that multiple embodiments would
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`be swappedinterchangeably.”