Dec. 8 (adopting Patent Owner’s own proposed definition of one of ordinary skill in the art); see Sur-reply 3–4 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3– 12, 102:20–104:9; Ex. 2017 ¶¶ 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).

12 Even if Dr. Howle met the qualifications of one of ordinary skill in the art, for the reasons set forth below, we would arrive at the same conclusion, i.e., that the challenged claims would have been obvious over the combined disclosures of Yoakim, Jarisch, Rossi, and Castellani.

Patent 11,230,430 B2 “To satisfy the written description requirement the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention.” PowerOasis, 522 F.3d at 1306 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)) (internal marks omitted).

But Patent Owner and Dr. Howell do not explain how a barcode could be used in the devices depicted in Figures 16–18, which place the detection means 2.4.2 on the outer circumference of the flange (not its underside) and rely on toothed-rings physically interacting with either the chamber, retaining arms, or a pinion.

Petitioner further contends that one of ordinary skill in the art would have implemented the capsule recognition process of Rossi in the device of Yoakim and Jarisch in order to both increase safety and provide improved accuracy of brewing conditions.

But that passage that he cited was interesting, because it didn't say it's well understood to use grooves to cause turbulence, as you might expect if you're relying upon a priority document for purposes of your obviousness argument.

And then I'll get back with you and I'd like to cover the motivation to combine Yoakim and Jarisch, I think that's quite important and dispositive of all assertions of unpatentability in both cases, as well as hit whatever other issues Your Honors may be troubled by.

What Mr. McCraw did not address is the fact that Yoakim tells us in paragraph 16 that his enclosure has a flared design with a widening sidewall and an outer surface or structure for engaging external rotational driving means.

And so, to suggest that Yoakim's paragraph 215 would motivate or indicate to a person of ordinary skill in the art to add indentations to the capsule is pure hindsight.

And so, I submit to the panel, there is no evidence presented as to why a person of ordinary skill in the art would achieve turbulent flow in Yoakim's capsule or look to Rapparini for that result.

In accordance with the Consolidated Trial Practice Guide4 (“CTPG”), issued in November 2019, Patent Owner may request to reserve time for a brief sur-rebuttal.

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Patent Owner asserts that Petitioner argued successfully before the district court that the term “barcode” means a “machine readable code consisting of parallel bars of different widths that encode more than only two unique binary characters such as 0 or 1.” Prelim. Resp. 17 (citing Ex. 1052, 7, 9–12).

“To satisfy the written description requirement the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention.’” PowerOasis, 522 F.3d at 1306 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (brackets and emphasis omitted)).

First, according to Patent Owner, “the Petition addresses only the plain and ordinary meaning of ‘barcode,’” and fails to demonstrate that Yoakim’s “barcode” satisfies the construction adopted by the district court, i.e., a series of parallel bars of different widths that encode more than only two unique binary characters

On this record, Petitioner provides a reasoned argument, supported by specific citations to Castellani, to explain why one of ordinary skill in the art would have seen a benefit to using Castellani’s ejection forks and capsule removal mechanism in the combined system.

Applicable Framework Section 325(d) provides that, in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).

Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.

Patent Owner may also file an election to waive the preliminary response to expedite the proceeding.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

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Notice is hereby given, pursuant to 35 U.S.C. §§ 141, 142, and 319 and 37 C.F.R. §§ 90.2 and 90.3(a)(1), that K-fee System GmbH (“Patent Owner”) hereby appeals to the United States Court of Appeals for the Federal Circuit from the Final Written Decision entered on September 10, 2024 (Paper 26), and from all underlying orders, decisions, rulings, and opinions, regarding inter partes review of U.S. Patent No. 11,230,430 (“the ’430 Patent”) in Case No. IPR2023-00485.

In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner further states that the issues on appeal are anticipated to include, but are not limited to: (1) whether the United States Patent and Trademark Office (PTO) erred in determining that Patent Owner’s expert is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art; (2) whether the PTO erred in determining the priority date accorded to the ’430 Patent; (3) whether the PTO erred in determining that a person having ordinary skill in the art would have combined Yoakim, Jarisch, Rossi, and Castellani; and (4) whether the PTO erred in determining that the challenged claims are

U.S. Patent No. 11,230,430 unpatentable as obvious in light of Yoakim, Jarisch, Rossi, and Castellani.

Concurrently with this submission, in accordance with 37 C.F.R. § 90.2(a) and Federal Circuit Rule 15(a)(1), a copy of this Notice of Appeal is being filed with the Patent Trial and Appeal Board, and a copy is being filed electronically with the United States Court of Appeals for the Federal Circuit along with the required docketing fee.

Respectfully submitted, /Michael P. Chu/ Michael P. Chu, Lead Counsel Registration No. 37,112 Attorneys/Agents for Patent Owner