First Named Inventor liger (Not forsubmission under 37 CFR 1.98)

6h 17/385,109 Application Number Filing Date July 26, 2021 First Named Inventor ger |ExaminerName —s__—{sFB Brian Jennison

THE COURT: The witness has -- MR. KUNDU: So, Your Honor, the opinions he submitted during this case applies to a different level of ordinary skill, which percolates throughout the obviousness analysis.

Nespresso USA, Inc. Ex. 1068 Page 27 of 83 Laurens Howle - Direct June 7, 2018 disputed term, whether Nordskog discloses a container positionable within the brewing chamber.

Then with respect to the verdict question that asks whether or not the jury finds Nordskog discloses to a person of ordinary skill the element of reusability, does this meet your conclusion?

Nespresso USA, Inc. Ex. 1068 Page 46 of 83 Laurens Howle - Direct June 7, 2018 that one of the issues for the jury to decide is whether a person of ordinary skill in the art -- whether it would be obvious for them, or there would be some motivation or reason to combine the references we've talked about.

And, sir, before serving as an expert witness for Eko Brands, Solofill, Creative Concepts, did you work for any company that developed coffee machines?

“Board did not abuse its discretion in holding [Petitioner] to its word and disregarding its new theory first raised in reply.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-31 (Fed. Cir. 2019) “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g.[,] to make out a prima facie case of unpatentability.” PTAB Consolidated Patent Trial Practice Guide (Nov. 21, 2019), at 73 POR1 at 27; POR2 at 14-15; see also POSR1 at 20; POSR2 at 11.

Petitioner’s New Reply Argument Is Improper and Also Wrong “Petitioner also fails to provide a sufficient rationale to combine the teachings of [a single prior art reference’s] different embodiments.

Petitioner simply fails to explain sufficiently why one skilled in the art would have found it obvious to combine those teachings.” See Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01204, Paper 9, at 11 (PTAB Oct. 23, 2017) POSR1 at 18; POSR2 at 21; see Ex. 1004 at Fig. 16.

– Scalloped edges of Yoakim’s toothed structure reduce space for code and require additional modification to Jarisch ’937 for motivation to combine See POR2 at 22-25; POSR2 at 25-27.

• Jarisch ’937 is not prior art – Unrebutted Krüger Declaration (Ex. 2001) – German Priority Applications Corroborate Krüger – USPTO Found Priority in Related Matters • Failings in Petitioner’s grounds from cited references – Cavity free of a filter – Wall region including radially spaced and vertically oriented grooves that are free from extending entirely to the bottom region – Generating turbulence of water in the cavity • No motivation to combine references or embodiments therein See generally POPR1, PI-POSR1, POR1, POSR1.

Dear Board, Counsel for Patent Owner writes regarding the Oral Hearing in the above-captioned IPR that took place June 12, 2024.

After the hearing, Patent Owner confirmed the error and provides this update to clarify any confusion.

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Technology Background: Ribs, Grooves and Turbulent Flow in the Prior Art (EX1031, Claydon, FIG. 3) (EX1032, Erickson, FIG. 1) (EX1033, Sweeney, FIG. 2) (EX1034, Rubino, FIG. 2) (EX1035, Mariller, FIG. 1)

[7.a] [7.b] [7.c] [7.d] [7.e] [7.f] [7.g] [7.h] [7.i] [7.j] [7.k] [7.l] [7.m] A beverage system for making a beverage, comprising: a single-serve capsule comprising: a base element with a cavity, in which a raw beverage material is provided, a flange extending outwardly from the base element, the flange comprising a top side and an opposing bottom side; a cover that is fastened to the top side of the flange to close the cavity; and an identifier provided on the bottom side of the flange, the identifier being a barcode; and a beverage machine comprising: a sensor/detector, a brewing chamber configured to receive the base element of the single-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 single-serve capsule is free of a filter that is located inside of the cavity, the single-serve capsule also comprises: (i) an upper end portion that has an annular convexity and a lower end portion that has an annular concavity relative to the central axis of the base element; (ii) a barrier layer to prevent moisture or aroma from escaping out of the single-serve capsule; and (iii) a side wall having indentations; wherein the beverage machine also comprises: (i) a mandrel that is configured to pierce the cover in a region that is offset from the central axis of the base element; (ii) a seal that is configured to seal against the cover in a region between a peripheral edge of the flange and the region of the cover that is pierced by the mandrel;

[1.a] [1.b] [1.c] [1.d] [1.e] [1.f] [1.g] [1.h] [1.i] [1.j] Single-serve capsule for making a beverage, having a base element made of metal with a cavity that is free of a filter, and in which a raw beverage material is provided, the cavity including radially spaced and vertically oriented ribs, the capsule having a flange which is provided on the base element, and the cavity being closed by a metal cover, which is fastened on a top side of the flange, the base element comprises a wall region extending between the flange and a bottom region of the base element, the wall region includes radially spaced and vertically oriented grooves that are free from extending entirely to the bottom region, wherein the capsule has an identifier, which makes it possible to individualize the respective single-serve capsule, and the identifier is a barcode provided on a bottom side of the flange which is directed away from the metal cover.

Motivation to Combine – Undisputed Motivation Factors • • • Yoakim and Jarisch are analogous art in the field of portion capsule beverage extraction Each applications discloses an invention that may be applied to coffee/espresso machines Yoakim and Jarisch share a common applicant (Nestec S.A.) and a common inventor (A. Perentes)

’923 Priority – Jarisch Is Prior Art to the ’923 Patent • Undisputed Issues: • No single foreign application discloses the ’923 Patent’s claimed invention.

Counsel: From the Board – Petitioner is authorized to file a five-page reply in each proceeding no later than July 17, 2023.

Petitioner shall limit its reply to those arguments and evidence that it contends are both new and could not have been foreseen, and Petitioner shall include in any reply a clear statement detailing specific reasons why any allegedly “new argument not in the record at the time of filing the Petitions” could not have been foreseen and addressed in the Petition.

Dear Board: Petitioner Nespresso USA, Inc. writes requesting leave under 37 C.F.R. §42.108(c) to file a reply to Patent Owner’s Preliminary Response (Paper 6) in each of the above-referenced IPRs.

The parties have conferred, and counsel for Patent Owner has indicated it opposes Petitioner’s requested reply briefs.

This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed.

Art Unit 1792 AIA (FITF) Status No -- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -- Period for Reply

In order for a beverage to be produced the foil lid would necessarily have to be pierced (by a mandrel 29) or the heated water could not possibly enter the portion capsule.

Should applicant deign to disagree with The Office's position Jarisch discloses a method for a beverage by reading a code (70) located on the flange bottom (`937, fig. 4, reference signs 62 and 72) and the capsule is sealed by a foil lid (`937, paragraph [0036]).

To therefore modify the portion capsule of Halliday and place the barcode on the flange as taught by Jarisch would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.

Application/Control Number: 16/860,441 Art Unit: 1792 Page 17 Halliday or Halliday in view of Jarisch piercing the foil lid in a region that is offset from a central axis, Denisart discloses a portion capsule capable of producing a beverage which capsule would have al lid (perforatable membrane) (paragraph [0029]) that would be used in an apparatus and into which heated water would be pressure-injected (paragraph [0074]), which is to say that said apparatus would have to include a pump.

Please find below and/or attached an Office communication concerning this application or proceeding.

Examiner has reviewed these references and did not find any issue with patent owner's foreign priority date.

Primary Examiner, Art Unit 3761 Applicant is reminded that a complete written statement as to the substance of the interview must be made of record in the application file.

Title 37 Code of Federal Regulations (CFR) § 1 .133 Interviews, paragraph (b) 37 CFR § 1 .2 Business to be transacted in writing Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the interview.

A complete and proper recordation of the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the general thrust of each argument or issue discussed, a general indication of any other pertinent matters discussed regarding patentability and the general results or outcome of the interview, to include an indication as to whether or not agreement was reached on the issues raised.

Date June 17, 2022 Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE Javier Gonzalez None Present Tape No. Deputy Clerk Court Reporter / Recorder Attorneys Present for Plaintiffs: Attorneys Present for Defendants: None Present None Present

[126] Defendant’s motion for summary judgment came on for hearing on June 16, 2022.

Prior thereto, a tentative ruling was provided to the parties.

After considering the moving, opposition, and concomitant filings (including the Court’s Markman/Claims construction, see ECF No. 111), plus the arguments of counsel at the hearing, the Court adopts its tentative ruling as its final decision and GRANTS the motion for summary judgment.

By June 22, 2022: (1) the parties are to indicate if there is any portion of the tentative ruling that contains confidential material that should be redacted before the ruling is publicly filed; and (2) the Defendant is to prepare a proposed judgment.

K-fee’s core infringement theory—that the code used on the capsules of the accused products meets the “barcode” limitation of the claims—is flatly precluded by the Court’s Claim Construction Order, Dkt. 111.

What is more, ever since Nespresso notified K-fee of its intention to file a summary judgment motion of noninfringement based on the Court’s claim construction, K-fee has been busy putting new procedural facts on the ground that it hopes will somehow substantiate its forthcoming Rule 56(d) opposition.

To demonstrate a genuine issue, the party opposing summary judgment “must do more than simply show that there is some metaphysical doubt as to the material facts.

“[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986).

Summary judgment of noninfringement should be granted “where the patent owner’s proof is deficient in meeting an essential part of the legal standard for infringement, since such failure will render all other facts immaterial.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1323 (Fed. Cir. 2001) (citation omitted).