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Nespresso USA, Inc. v. K-fee System GmbH

Docket IPR2023-00485, Patent Trial and Appeal Board (Jan. 24, 2023)
Grace Karaffa Obermann, James Mayberry, Jon Tornquist, presiding
Case TypeInter Partes Review
Patent
11230430
Patent Owner K-fee System GmbH
Petitioner Nespresso USA, Inc.
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26 Final Written Decision original: Final Written Decision original

Document IPR2023-00485, No. 26 Final Written Decision original - Final Written Decision original (P.T.A.B. Sep. 10, 2024)
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.
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25 Other Hearing transcript: Other Hearing transcript

Document IPR2023-00485, No. 25 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Jul. 10, 2024)
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.
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22 Order Other: ORDER Setting Oral Argument 37 CFR § 4270

Document IPR2023-00485, No. 22 Order Other - ORDER Setting Oral Argument 37 CFR § 4270 (P.T.A.B. May. 7, 2024)
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.
Prior to arriving at any USPTO office location, please consult the following to verify entry requirements: https://www.uspto.gov/coronavirus.
Finally, the parties are reminded that each presenter should identify clearly and specifically each paper (e.g., by slide or screen number for a demonstrative) referenced during the hearing to ensure the clarity and accuracy of the court reporter’s transcript and for the benefit of all participants appearing electronically.
Either party may request that a qualifying LEAP practitioner participate in the program and conduct at least a portion of the party’s oral argument.
The Board will grant up to fifteen (15) minutes of additional argument time to that party, depending on the length of the proceeding and the PTAB’s hearing schedule.
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10 Order Other: Order Scheduling Order

Document IPR2023-00485, No. 10 Order Other - Order Scheduling Order (P.T.A.B. Sep. 13, 2023)

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9 Institution Decision Grant: Institution Decision Grant

Document IPR2023-00485, No. 9 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Sep. 13, 2023)

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5 Notice Notice filing date accorded: Notice NOTICE OF FILING DATE ACCORDED...

Document IPR2023-00485, No. 5 Notice Notice filing date accorded - Notice NOTICE OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE (P....

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27 Notice notice of appeal: Patent Owners Notice of Appeal

Document IPR2023-00485, No. 27 Notice notice of appeal - Patent Owners Notice of Appeal (P.T.A.B. Nov. 11, 2024)

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