Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 1 of 32
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF MASSACHUSETTS
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`____________________________________
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`KEURIG GREEN MOUNTAIN, INC.,
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`Plaintiff,
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`vs.
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`TOUCH COFFEE & BEVERAGES, LLC )
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`Defendant.
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`____________________________________)
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`Civil Action No. 1:16-CV-10142-DJC
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`DECLARATION OF DAVID E. WHEELER
`IN SUPPORT OF DEFENDANT AND COUNTERCLAIMANT TOUCH COFFEE &
`BEVERAGES, LLC’S MOTION FOR PRELIMINARY INJUNCTION
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`I, DAVID E. WHEELER, declare and state as follows:
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`1.
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`I am over the age of eighteen years, of sound mind, and am competent in all
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`respects to make this Declaration in support of Touch’s Motion for Preliminary Injunction.
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`Except as expressed noted below, I have personal knowledge of the facts set forth herein. The
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`facts set forth herein are true and correct.
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`I. INTRODUCTION
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`2.
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`I received a Bachelor of Applied Science Degree in Automated Manufacturing
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`Technology from the ITT Technical Institute (Portland, Oregon) in 1990.
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`3.
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`I have been employed by the Boyd Coffee Company from June 1988 to present in
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`various capacities.
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`4.
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`I have been serving as a Project Manager and a Design Engineer at the Boyd
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`Coffee Company from June 2001 to present, responsible for the design of new mechanical and
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`electrical products for the coffee and espresso beverage industry.
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 2 of 32
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`5.
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`I have spent many years evaluating and modifying beverage systems to produce a
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`better end product and correcting many deficiencies in the current beverage systems. I regularly
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`consult with other manufacturers on design improvements and system improvements as it relates
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`to the beverage industry.
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`6.
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`I train personnel on the repair and operation of new beverage brewing products. I
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`am a certified coffee brewing instructor certified by the Specialty Coffee Association of America
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`(SCAA). I train individuals on the proper methods of brewing coffee within the standards set
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`forth under the Golden Cup Award and the effects that all of the elements have on brewing
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`coffee to include the different coffee brewing methods such as drip coffee and espresso.
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`7.
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`I have authored a coffee brewing control chart to provide a simple yet detailed
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`graphical explanation of the brewing relationship as it relates to brewed coffee.
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`8.
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`I have served as a judge with the SCAA for new products in the category of
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`commercial brewing appliances.
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`9.
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`I developed specialty coffee brewing profiles for a coffee company to produce the
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`best tasting coffee within the SCAA gold cup standards to apply to our coffee brewing systems
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`for our customers.
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`10.
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`I have worked with equipment both for the commercial application as well as the
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`home coffee brewing application to include a single cup brewer for both the home and hotel
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`applications to produce the best quality cup possible with single-serve cartridges such as K-
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`Cup® pods, Touch’s XBold Cup™, and soft mesh pods from Boyd Coffee Company.
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`11.
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`I am an inventor on U.S. Patent No. 6,786,138, entitled “Device for Preparing
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`Milk Froth for Cappuccino.”
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`12.
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`13.
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`Exhibit A is a copy of my current resume.
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`I have been retained by Touch Coffee & Beverages, LLC (“Touch”) at a rate of
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`$140/hour. My compensation is not in any way dependent on the outcome of this litigation.
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 3 of 32
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`II. SCOPE OF WORK
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`14.
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`Touch asserts four patents against Keurig, including U.S. Patent No. 9,144,343
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`(the “‘343 Patent”), U.S. Patent No. 9,149,149 (the “‘149 Patent”), U.S. Patent No. 9,149,150
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`(the “‘150 Patent”), and U.S. Patent No. 9,149,151 (the “‘151 Patent”) (collectively referred to as
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`the “Touch Patents”).
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`15.
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`I have been asked to provide a rebuttal to Mr. Alexander H. Slocum’s analysis
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`regarding the validity of the Touch Patents.
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`16.
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`Touch’s counsel have explained to me that determining whether a claim is valid
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`based on prior art references requires that the references collectively teach each and every
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`limitation of the claim. Touch’s counsel have also explained to me that if multiple references are
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`combined to teach the limitations of the claims, a person of ordinary skill in the art at the time of
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`the filing of the Touch Patents must have a reason or motivation to combine the teachings of the
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`references to arrive at the claimed invention.
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`17.
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`In view of the Touch Patents, a person of ordinary skill in the art, in my opinion,
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`would have had a bachelor’s degree in mechanical engineering or other applicable disciplines of
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`science or engineering, or equivalent relevant work experience in the coffee, tea, and beverages
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`equipment industry.
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`III. MATERIALS REVIEWED
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`18.
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`I have reviewed the following materials:
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`- The Touch Patents and their file histories
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`- U.S. Patent No. 4,646,626 (the “‘626 Reference”)
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`- U.S. Patent No. 7,594,470 (the “‘470 Reference” - attached as Exhibit B)
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`- U.S. Patent No. 7,032,818 (the “‘818 Reference”)
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`- U.S. Patent No. 7,607,385 (the “‘385 Reference” - attached as Exhibit C)
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`- U.S. Patent No. 7,318,372 (the “‘372 Reference”)
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`- U.S. Patent Publication No. 2005/0066819 (the “‘66819 Reference” - attached as
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 4 of 32
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`Exhibit D)
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`- U.S. Patent Publication No. 2011/0111098 (the “‘098 Reference”)
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`- WO 2013/153473 (the “ WO‘473 Reference”)
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`- Declaration of Professor Alexander H. Slocum on Non-Infringement and Invalidity of
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`Touch’s Patents, April 1, 2016
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`- Expert Report of Professor Alexander Slocum, July 8, 2011 (“Slocum Expert Report”
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`- attached as Exhibit E).
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`IV. TOUCH’S PATENTS
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`19.
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`I formed the following opinions after my review and analysis:
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`- The Touch Patents are patentable over the combination of the ‘372 Reference and the
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`‘626 Reference.
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`- The Touch Patents are patentable over the combination of the ‘372 Reference and the
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`‘626 Reference, and the ‘818 Reference.
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`- The Touch Patents are patentable over the combination of the ‘098 Reference and the
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`‘626 Reference.
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`- The Touch Patents are patentable over the combination of the ‘098 Reference, the
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`‘626 Reference, and the ‘818 Reference.
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`- The Touch Patents are patentable over the combination of the WO ’473 Reference
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`and the ‘626 Reference.
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`- The Touch Patents are patentable over the combination of the WO ’473 Reference,
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`the ‘626 Reference, and the ‘818 Reference.
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`- The Touch Patents are enabling.
`V. TOUCH’S PATENTS
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`20.
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`The Touch Patents cover a single-serve brewing system that works with a K-
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`Cup® pack and a second beverage pack (or cartridge) with a different style and/or size than the
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`K-Cup pack to brew a beverage. See e.g., ‘343 Patent, FIG. 6, 9:46-10:17, FIG. 7, 10:18-42,
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 5 of 32
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`FIGS. 19A-19C, 17:36-57. To do so, the patented brewer includes an inlet needle, an outlet
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`needle that works with the K-Cup pack, and another outlet needle that works with the second
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`beverage pack. See id. The inlet needle is used to inject fluid into the beverage pack to brew a
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`beverage. See id. The two outlet needles are vertically offset and are used to drain beverage
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`from their respective beverage pack. See id.
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`21.
`that the brewer may only work with authorized beverage packs (or cartridges). See e.g., the ‘343
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`In addition, Touch Patents contemplate using an authentication indicia to ensure
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`Patent, 5:56-63, FIG. 44, 33:5-11.
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`VI. PRIOR ART REFERENCES
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`A.
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`U.S. Patent No. 4,646,626 (the “‘626 Reference”)
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`22. Mr. Slocum alleges that the ‘626 Reference discloses the use of two differently
`sized cartridges. See e.g., Slocum Decl., ¶ 86.
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`23.
`sized cartridges with a brewer. See e.g., Exhibit B (‘470 Reference) FIGS. 1, 2, 3, 4, 5:56-6:41,
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`U.S. 7,594,470 (the “‘470 Reference”) discloses the use of a various differently
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`7:17, 7:16-24, 7:25-43. For instance, FIGS. 1 and 3 of the ‘470 Reference (reproduced below)
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`illustrates two different height pods, which can be used with a brewer shown in FIG. 12 of the
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`‘470 Reference. See e.g., Exhibit B (‘470 Reference) FIGS. 12, 15:33-54. In particular, FIG.
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`3 of the ‘470 Reference illustrates a variation of the infusion pod design of FIG. 1 wherein the
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`second filter member 32 is sealed to the fluid distribution member forming one pod that contains
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`both an extractable material 38 and a liquid dispersible material 18. Accordingly, with the
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`second filter member 32 sealed above the infusion pod 12 of the FIG. 1, the dual pod shown FIG.
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`3 is taller than the infusion pod 12 of the FIG.1.
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 6 of 32
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`24.
`Touch Patents. See ‘150 Patent, Page 2.
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`The ‘470 Reference was submitted to the USPTO during the prosecution of the
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`25.
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`To the extent that the ‘626 Reference discloses the use of two differently sized
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`cartridges, the ‘626 Reference is cumulative to the ‘470 Reference.
`B.
`U.S. Patent No. 7,032,818 (the “‘818 Reference”)
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`26. Mr. Slocum alleges that the ‘818 Reference discloses the use of an authentication
`indicia. See e.g., Slocum Decl., ¶ 91.
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`27.
`authentication indicia. See e.g., Exhibit C (‘385 Reference), FIG. 40, 24:31-38, 54-57. In
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`U.S. Patent No. 7,607,385 (the “‘385 Reference”) discloses the use of
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`particular, FIG. 40 of the ‘385 Reference (reproduced below) shows a cartridge recognition
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`means 252 to allow the brewer to recognize the type of beverage cartridge that has been inserted
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`into the brewer. See e.g., Exhibit C (‘385 Reference), 24:31-38.
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 7 of 32
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`28.
`Touch Patents. See ‘150 Patent, Page 2.
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`The ‘385 Reference was submitted to the USPTO during the prosecution of the
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`29.
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`To the extent that the ‘818 Reference discloses the use of an authentication
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`indicia, the ‘818 Reference is cumulative to the ‘385 Reference.
`C.
`U.S. Patent No. 7,318,372 (the “‘372 Reference”)
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`30.
`published patent application of the ‘372 Reference. See ‘372 Reference, front page. The ‘66819
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`U.S. Patent Publication No. 2005/0066819 (the “‘66819 Reference) is the earlier
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`Reference was cited and fully considered by the USPTO Examiner during the prosecution of the
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`Touch Patents. See e.g., ‘150 Patent, Page 2. Thus, the ‘372 Reference (through the ‘66819
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`Reference) is a prior art reference that the USPTO had already considered.
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`31.
`of different beverages with reduced cross-contamination between the different beverages.” See
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`The ‘372 Reference relates to “beverage making equipment for making a plurality
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`‘372 Reference, Technical Field.
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`32.
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`The ‘372 Reference repeatedly discusses the concept of using multiple outlet
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`tubes (or outlet piercing elements) to prevent contamination:
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`-
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`“The present invention relates to beverage making equipment for making a plurality of
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`different beverages with reduced cross-contamination between the different beverages.”
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`See ‘372 Reference, Technical Field.
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`“A difficulty with many beverage making systems is cross-contamination between
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`beverages of different types made in the same machine.” See ‘372 Reference, 1:38-41.
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`“The water injector 13 has a profiled tip 14 that penetrates only a short distance through
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`the laminated foil sheet 5, thereby permitting water injection with minimal cross-
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`contamination as described in US 2004/0025701A, the entire content of which is
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`incorporated herein by reference.” See ‘372 Reference, 3:27-32.
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`“By using different outlet tubes for different beverages it will be appreciated that cross-
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`contamination can be minimized.” See ‘372 Reference, 3:40-42.
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`“The multiple outlets may be all of the same type, for example one outlet may be
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 8 of 32
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`provided for each beverage to be made by the machine in order to prevent cross-
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`contamination.” See ‘372 Reference, 5:18-21.
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`33.
`capsules) with multiple outlet tubes 20 and 22. See FIG. 1 and FIG. 3. FIG. 1 (reproduced
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`The ‘372 Reference teaches using the same capsule 40 (and not different
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`below with added notations) of the ‘372 Reference illustrates the brewing system with multiple
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`outlet tubes 20 and 22 that could move upwardly to pierce the base of the same capsule 40. In
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`use, one of the outlet tubes, for example tube 20 as shown in FIG. 1, is moved upwardly to pierce
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`the base of the capsule so that a beverage made in the capsule 40 can exit the capsule through the
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`selected outlet tube 20.
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`
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`34.
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`As shown in FIG. 1 of the ‘372 Reference, the first piercing location and the
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`second piercing location are on the same horizontal plane, since the base 3 of the capsule 40 is a
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`flat surface, and are not vertically offset from one another.
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`35.
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`The ‘372 Reference does not disclose the claim limitation of the inlet needle
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`piercing the beverage cartridge “as the cover moves from the partially open position to the closed
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`position”.
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`36.
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`The ‘372 Reference does not disclose the claim limitation of the first needle
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`piercing the first beverage cartridge “as the cover moves from the partially open position to the
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`closed position”. The ‘372 Reference also does not disclose the claim limitation of the second
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`needle piercing the second beverage cartridge “as the cover moves from the partially open
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`position to the closed position”.
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`37.
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`The ‘372 Reference does not disclose a pump that is operably connected to the
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`inlet needle.
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`D.
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`U.S. Patent Publication No. 2011/0111098 (the “‘098 Reference”)
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`38.
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`The ‘098 Reference relates to a system for delivering infusion beverages that
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`allows preparing and delivering various types of infusion beverages “without being mutually
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`contaminated.” See ‘098 Reference, Paragraph [0005].
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`39.
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`The ‘098 Reference repeatedly discusses the concept of using multiple delivering
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`ducts to prevent contamination:
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`-
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`“[0005] Object of the present invention is solving the above prior art problems by
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`providing a system for delivering infusion beverages that allows preparing and
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`delivering various types of infusion beverages without these latter ones being
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`mutually contaminated.” See ‘098 Reference, Paragraph [0005].
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`-
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`“[0019] …. Each delivering duct 22, 23 is aimed for delivering a particular type of
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`infusion beverage so that there is no contamination of such beverage with residuals
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`deriving from the previous delivery, in the same duct, of a beverage of a different
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`type.” See ‘098 Reference, Paragraph [00019].
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`-
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`“[0023] ... If, in the following operating cycle, it is required to prepare and deliver a
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`different type of beverage, such as for example tea, the related capsule 10 will have a
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`different arrangement of recesses 14 with respect to the previously-used capsule, so
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`that its perforation portion 13 will correspond to a different delivering duct, also
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`specific for the new beverage, thereby excluding any possible contamination with
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`possible residuals deriving from the preparation of the previous beverage.” See ‘098
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`Reference, Paragraph [0023].
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`40.
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`FIG. 1a (reproduced below with added notations) of the ‘372 Reference illustrates
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`the brewing system with multiple delivering ducts 22 and 23 designed for delivering a particular
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`type of infusion beverage so that there is no contamination. See ‘372 Reference, FIG. 1,
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`Paragraph [0019].
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`
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`41.
`multiple delivering ducts. See FIGS. 1a, 1c, 2a, and 2b, Paragraphs [0021]-[0024]. As shown in
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`The ‘098 Reference teaches using the same-height capsule 10 to work with
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`FIG. 1a (reproduced above), the delivering ducts 22 and 23 and the capsule 10 are designed such
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`that the base 12 of the capsule 10 is pierced by one and only one delivering ducts 22 or 23 when
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`the capsule 10 is inserted into the housing 21. See ‘098 Reference, Paragraph [0021].
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`42.
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`As shown in FIG. 1a (reproduced above) of the ‘098 Reference, the first piercing
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`location and the second piercing location are on the same horizontal plane, and are not vertically
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`offset from one another. The ‘098 Reference also does not disclose a pump that is operably
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 11 of 32
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`connected to the inlet needle.
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`43.
`Reference – see ¶ 30 above) to the extent that the ‘098 Reference discloses the concept of using
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`The ‘098 Reference is cumulative to the ‘372 Reference (and the ‘66819
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`the same cartridge to brew different beverages, and the concept of using the same cartridge and
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`two delivering ducts 22 and 23 to avoid cross-contamination.
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`E.
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`WO 2013/153473 (the “WO ‘473 Reference”)
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`44.
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`The WO ‘473 Reference discloses a system for producing “beverages having
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`variable organoleptic characteristics,” such as espresso coffee and American coffee, using the
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`same single-serve capsule or cartridge. See WO ‘473 Reference, Technical Field, Background
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`Art.
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`45.
`elements or piercers. See WO ‘473 Reference, Page 5, Lines 16-27.
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`The WO ‘473 Reference also discusses the concept of using two piercing
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`46.
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`The WO ‘473 Reference repeatedly teaches using a specially-designed capsule
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`and using the same capsule in alternative positions to brew different beverages, and thereby
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`teaches away from using capsules with different styles, sizes, or dimensions (including heights),
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`as follows:
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`“According to a first aspect, the present disclosure relates to a capsule containing at
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`least one ingredient for preparing an edible product by flowing water there through,
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`which can be used in different modes such that different beverages can be obtained by
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`means of the same capsule, depending upon the position in which the capsule is
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`introduced in the brewing chamber.” See WO ‘473 Reference, page 2, lines 17-21.
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`-
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`“In practice, the capsule can thus have two alternative positions of use, defined by the
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`mutual position of said first wall portion and said second wall portion.” See WO ‘473
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`Reference, page 3, lines 16-17.
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`-
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`“The two alternative brewing positions which the capsule can take in the brewing
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`chamber can be selected by the user based on the shape of the capsule bottom, i.e. the
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`shape of the product-outlet wall.” See WO ‘473 Reference, page 4, lines 4-6.
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`“[A] brewing chamber configured for selectively receiving the capsule in two
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`alternative positions, ….” See WO ‘473 Reference, page 5, lines 9-10.
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`“This arrangement of the piercing members 27 and 29 in combination with the
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`asymmetrical shape of the product-outlet wall 7 of the capsule 1 lead to the possibility
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`of preparing a beverage under different brewing conditions using the same
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`capsule…” See WO ‘473 Reference, page 11, lines 30-34.
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`“Thus, the same capsule 1 can be used in two different brewing modes obtaining two
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`different beverages.” See WO ‘473 Reference, page 13, lines 31-32.
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`“The tag 11T will be positioned in one or the other of two alternative angular
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`positions depending on how the capsule 1 is introduced in the brewing chamber 15.”
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`See WO ‘473 Reference, page 14, lines 14-15.
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`-
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`“The tag 11T can therefore be placed in either one of two positions corresponding to
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`to two alternative positions of the capsule 1.” See WO’ 473 Reference, page 14, lines
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`26-27.
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`- FIGS. 4, 5, and 5A.
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`47.
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`FIGS. 4 and 5 (reproduced below) of the WO ‘473 Reference illustrates the
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`brewing chamber receiving the capsule in two alternative positions.
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`
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`48.
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`The WO ‘473 Reference discloses a tag 11T used to control whether, as shown in
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`FIGS. 4 and 5 of the WO ‘473 Reference, the brewing chamber 15 includes a capsule recess 17
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 13 of 32
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`to receive the capsule 1. The capsule recess 17 is designed to receive the same capsule 1 in
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`alternative positions. See e.g., WO ‘473 Reference, FIGS. 4 and 5. As shown in FIG. 4, the
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`capsule recess 17 receives the capsule 1 in a position where the tag 11T is oriented to the left and
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`below the sensor 35. If the sensor 35 detects the tag 11T, this means that the capsule 1 is in the
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`position shown in FIG. 4 and that the pump shall deliver a higher water rate (to pump more water
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`since American coffee’s serving size is generally greater than the serving size of espresso) at a
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`lower pressure conducive to brewing American coffee. See WO ‘473 Reference, page 15, lines
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`1-4. As shown in FIG. 5, the capsule recess 17 receives the capsule 1 in an alternative position
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`where the tag 11T is oriented to the right. When the capsule 1 is placed with the tag 11T
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`oriented to the right and away from the sensor 35 (as shown in FIG. 5), the sensor delivers a
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`signal of “tag absent” as in the case of FIG. 5, the pump will be controlled to deliver a slower
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`water rate (to pump less water for espresso) at a higher pressure conducive to brewing espresso
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`coffee. See WO ‘473 Reference, page 15, lines 4-6. Brewing espresso coffee usually requires
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`water to be fed into the capsule at a relatively high pressure (around 12 to 15 bars). See WO
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`‘473 Reference, page 1, lines 14-16. Such high pressure is required to form the cream on top of
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`the espresso coffee. See WO ‘473 Reference, page 15, lines 16-17.
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`49.
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`FIGS. 5 and 5A (reproduced below) of the WO ‘473 Reference, when viewed
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`together, illustrates how the second piercing member 29 pierces the capsule 1.
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`50.
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`As shown in FIGS. 5 and 5A of the WO ‘473 Reference, when the capsule 1 is
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`placed in the brewing chamber with the tag 11T oriented to the right and away from the sensor
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`35, and as the brewing chamber 15 closes, the water-inlet wall 5 of the capsule 1 will be
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`perforated by the perforator 21 but the product-outlet wall 7 will remain integral, i.e., not
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`aperture or not pierced to cause the beverage to flow out of the capsule. When water is pumped
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`through the water inlet duct 23 into the capsule, pressure will build-up inside the capsule 1, since
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`water cannot escape the capsule from the bottom. This causes a gradual deformation of the
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`product-outlet wall 7 as shown in the detail of FIG. 5A. Once the capsule 1 is sufficiently
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`deformed, the product-wall 7 will be penetrated by the second piercing member (or element) 29,
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`and the beverage will flow out of the capsule 1. See WO ‘473 Reference, page 13, lines 14-22.
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`51.
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`In summary, as shown in FIGS. 5 and 5A of the WO ‘473 Reference and as
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`discussed in ¶ 48 above, the second piercing member (or element) 29 pierces the capsule 1 to
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`drain the espresso only after enough water has been injected into the capsule to deform the wall 7
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`of the capsule 1 sufficiently such that the capsule 1 will be pierced by the piercing member (or
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`element) 29, rather than the claimed limitation of the second needle piercing the second beverage
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`cartridge “as the cover moves from the partially open position to the closed position”.
`
`52.
`Reference – see ¶ 30 above) to the extent that the WO ‘473 Reference discloses the concept of
`
`The WO ‘473 Reference is cumulative to the ‘372 Reference (and the ‘66819
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`using the same cartridge to brew different beverages and the concept of using the same cartridge
`
`and two piercing members (or elements), especially in view of the statements that Mr. Slocum
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`makes in ¶ 119 of his declaration. Mr. Slocum states that “since the outlet tubes 20-23 (outlet
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`needles) [of the ‘372 machine] moves upwardly to pierce a cartridge, one of the tubes could
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`easily accommodate piercing the bottom of a cartridge that is positioned shown in FIG. 1 of the
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`‘372 Patent by moving upwardly further to pierce the cartridge. The first outlet needle would
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`pierce the shorter first beverage cartridge at a first location that is vertically higher than the
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`second location where the outlet needle would pierce the longer second beverage cartridge.”
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 15 of 32
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`VI. VALIDITY OF THE TOUCH PATENTS
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`A.
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`Claim Construction
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`53.
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`In my validity analysis, I was instructed by Touch’s counsel to adopt the
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`following constructions:
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`a)
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`b)
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`c)
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`d)
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`e)
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`f)
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`“a cartridge having a beverage ingredient” means “a cartridge with
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`ingredient to brew a beverage”.
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`“a needle” is “an instrument that pierces and that injects or drains.”
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`“a first fixed piercing location within the brewer” means “a first fixed
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`place or area within the brewer where piercing occurs.”
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`“a second fixed piercing location within the brewer” means “a second
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`fixed place or area within the brewer where piercing occurs.”
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`“a first predetermined piercing location within the brewer” means “a first
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`predetermined place or area within the brewer where piercing occurs.”
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`“a second predetermined piercing location within the brewer” means “a
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`second predetermined place or area within the brewer where piercing
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`occurs.”
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`g)
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`“the first outlet needle will pierce the first beverage cartridge at a first
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`fixed piercing location within the brewer” means “the first outlet needle
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`will pierce the first beverage cartridge at a first fixed place or area within
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`the brewer where piercing occurs.”
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`h)
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`“the second outlet needle will pierce the second beverage cartridge at a
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`second fixed piercing location within the brewer” means “the second
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`outlet needle will pierce the second beverage cartridge at a second fixed
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`place or area within the brewer where piercing occurs.”
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`i)
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`“vertically offset” means “spaced above or below.”
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`54.
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`I reserve the right to amend and/or supplement my analysis based on the Court’s
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 16 of 32
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`claim construction.
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`B.
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`Combination of the ‘372 Reference, the ‘626 Reference, and/or the ‘818 Reference
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`55. Mr. Slocum alleges that claim 1 of the ‘343 Patent and claims 1 and 13 of the
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`‘149 Patent are obvious based on the combination of the ‘372 Reference and the ‘626 Reference,
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`and that claim 1 of the ‘150 Patent and claim 1 of the ‘151 Patent are obvious based on the
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`combination of the ‘372 Reference, the ‘626 Reference, and the ‘818 Reference. See Slocum
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`Decl., ¶¶ 117-126. I disagree.
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`56.
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`As discussed in ¶ 30 above, the ‘372 Reference is a prior art that the USPTO had
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`already considered.
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`57.
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`As discussed in ¶ 25 above, the ‘626 Reference is cumulative to the ‘470
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`Reference which was submitted to the USPTO during the prosecution of the Touch Patents.
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`58.
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`As discussed in ¶ 29 above, the ‘818 Reference is cumulative to the ‘385
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`Reference which was submitted to the USPTO during the prosecution of the Touch Patents.
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`59.
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`A person of ordinary skill in the art would not combine the ‘372 Reference with
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`the ‘626 Reference to arrive at the claims of the Touch Patents for several reasons.
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`60.
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`As discussed in ¶¶ 32 - 33 above, the ‘372 Reference teaches constructing special
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`designs for the same specific capsule to avoid contamination, and thereby teaches away from
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`using different capsules with different styles, sizes, or dimensions (including heights).
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`61.
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`Furthermore, as shown in FIG. 1 of the ‘372 Reference, the capsule receiving
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`station 30 is designed to receive and function with capsule 40. The capsule receiving station 30
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`and the ‘372 brewing system would not function properly with capsule with a style, size, or
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`dimension (including height) different than the style, size, or dimension (including height) of the
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`disclosed capsule 40.
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`62. Mr. Slocum suggests using a shorter capsule with the ‘372 machine in ¶ 119 of
`his declaration. See Slocum Decl., ¶ 119. Mr. Slocum also acknowledges that “the [Touch]
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`system allows the use of differently-sized beverage cartridges, and thus the ability to brew
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 17 of 32
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`stronger coffee using a larger cartridge.” See Slocum Decl., ¶ 27; see also ‘343 Patent, 4:55-5:4.
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`With all things being equal, merely adding a smaller or shorter version of the capsule would no
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`doubt pack less coffee grounds, and would therefore brew weaker coffee, which is contrary to a
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`goal of the Touch system. Therefore, a person of ordinary skill in the art would not use a shorter
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`capsule with the ‘372 machine.
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`63. Mr. Slocum suggests using the K-Cup cartridge in the ‘372 machine in ¶ 119 of
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`his declaration. However, in my opinion, using the K-Cup cartridge would not work in the ‘372
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`machine. Assuming a K-Cup cartridge that is shorter than the capsule 1 could be inserted into
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`the lower clamp 11 and the outlet tube 20 could be moved upward farther to pierce the bottom
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`the K-Cup capsule (as suggested by Mr. Slocum), there will be a gap between the bottom of the
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`K-Cup and the base of the lower clamp 11. The gap would contaminate the other outlet tubes 21,
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`22, and 23 shown in FIG. 2 of the ‘372 Reference.
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`64.
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`Based on my experience, often the outlet tube 20 does not pierce the cartridges
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`cleanly such that beverages can leak between the gap of the outer surface of the needle and the
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`pierced hole. The leaked beverage would spill onto the base of the lower clamp 11 since there is
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`a gap or space between the bottom of the shorter K-Cup cartridge and the base of the lower clap
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`11. With the other outlet tubes 21, 22, and 23 recessed within their respective bores 15, 16, and
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`17 as shown in FIG. 2 of the ‘372 Reference, the spilled beverage on the base of the lower clamp
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`11 would drain through the bores and through the outlet tubes, and would therefore
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`contaminating the outlet tubes.
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`65.
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`However, when the capsule 1 with the proper height is inserted into the lower
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`clamp 11, as shown in FIG. 1, there is no gap or space between the bottom of the capsule 1 and
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`the base of the lower clap 11 such that cross-contamination is eliminated. Therefore, a person of
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`ordinary skill in the art would not use a shorter capsule nor a K-Cup capsule with the ‘372
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`machine as suggested by Slocum.
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`66. Moreover, Mr. Slocum submitted an expert report dated July 8, 2011 in a different
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`matter between Keurig Inc. and the USPTO, Civil Action No. 09-2353 (BAH), (the “‘Slocum
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`Case 1:16-cv-10142-DJC Document 53 Filed 04/11/16 Page 18 of 32
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`Expert Report”). See Exhibit E. In his Expert Report, Mr. Slocum suggests that the potential for
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`contamination teaches away from combining references. See Exhibit E (Slocum Expert Report),
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`¶¶ 80-86.
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`67.
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`In the Civil Action against the USPTO, Keurig retained Mr. Slocum to evaluate
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`the obvious rejection made by the USPTO based several prior art relating to U.S. Patent
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`Application No. 10/658,925 (the ‘925 application), which is also referred to as “fluted-filter
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`patent application.”
`
`68.
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`In the Slocum Expert Report, one of the arguments that Mr. Slocum relied upon to
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`overcome the obvious rejection is the difficulty in sealing the fluted filter to the inner sidewall of
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`the cartridge. See Exhibit E (Slocum Expert Report), ¶¶ 72-86. In short, Mr. Slocum’s opinion
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`was that the combination of the two or more references that the USPTO is relying on to make the
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`obvious rejection of the ‘925 application is in error because the fluted filter would not seal
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`properly to the inner sidewall of the capsule, and therefore the hot water injected into the capsule
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`under pressure could “lead to coffee grounds falling into the lower chamber as well, thereby
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`contaminating the final product.” See Exhibit E (Slocum Expert Report), ¶ 80. Mr. Slocum then
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`stated that combining two or more references seems like going in exactly the wrong direction
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`(see Exhibit E (Slocum Expert Report), ¶ 82, last sentence) and that the disclosure in the
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`secondary references (Spiteri and Michie