Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: January 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`KEURIG GREEN MOUNTAIN, INC.,
`Petitioner,
`
`v.
`
`TOUCH COFFEE & BEVERAGES, LLC,
`Patent Owner.
`
`Case IPR2016-01390
`Patent 9,144,343 B2
`
`Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: January 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`KEURIG GREEN MOUNTAIN, INC.,
`Petitioner,
`
`v.
`
`TOUCH COFFEE & BEVERAGES, LLC,
`Patent Owner.
`
`Case IPR2016-01390
`Patent 9,144,343 B2
`
`Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`I. INTRODUCTION
`
`A. Background
`Keurig Green Mountain, Inc. (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1–5 and 7–19 of U.S. Patent No. 9,144,343 B2
`(Ex. 1001, “the ’343 patent”). Paper 2, “Pet.” Touch Coffee & Beverages,
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 6, “Prelim.
`Resp.”
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, and the
`evidence currently of record, we determine that Petitioner has not
`demonstrated that there is a reasonable likelihood that it would prevail with
`respect to at least one of the claims challenged in the Petition. Accordingly,
`we do not institute inter partes review.
`
`B. Related Matters
`The parties note that the ’343 patent is the subject of Keurig Green
`Mountain, Inc. v. Touch Coffee & Beverages, LLC, Case No. 1:16-CV-
`10142-DJC (D. Mass.). Pet. v; Paper 5, 1. Petitioner has challenged related
`patents in IPR2016-01392 and IPR2016-01396 (challenging U.S. Patent No.
`9,149,149); IPR2016-01394 (challenging U.S. Patent No. 9,343,151); and
`IPR2016-01395 (challenging U.S. Patent No. 9,343,150). Pet. v; Paper 5, 1.
`
`2
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–5 and 7–19 of the ’343 patent are
`unpatentable under 35 U.S.C. § 103 as having been obvious, based on the
`following grounds (Pet. 5):
`References
`Castellani1 and Yoakim2
`Castellani, Rivera,3 and Sylvan4
`Castellani, Yoakim, and Thomas5
`Castellani, Rivera, Sylvan, and Thomas
`Castellani, Yoakim, and Cooke6
`Castellani, Rivera, Sylvan, and Cooke
`
`Challenged Claims
`1–5, 7–8, 10–11, and 13–18
`1–5, 7–8, 10–11, and 13–18
`9 and 19
`9 and 19
`12
`12
`
`Petitioner contends that Yoakim is prior art to the ’343 patent under
`35 U.S.C. § 102(a)(1),7 and Castellani is prior art under 35 U.S.C.
`§ 102(a)(2). Pet. 15, 19. Petitioner does not make any affirmative statement
`
`
`1 WO 2013/153473 A1 to Castellani, published Oct. 17, 2013 (Ex. 1002).
`2 U.S. Patent No. 7,569,243 B2 to Yoakim et al., issued Aug. 4, 2009
`(Ex. 1003).
`3 U.S. Patent No. 9,232,871 B2 to Rivera, issued Jan. 12, 2016 (Ex. 1008).
`4 U.S. Patent No. 5,325,765 to Sylvan et al., issued July 5, 1994 (Ex. 1009).
`5 U.S. Patent No. 7,032,818 B2 to Thomas et al., issued Apr. 25, 2006
`(Ex. 1010).
`6 U.S. Patent No. 7,318,372 B2 to Cooke, issued Jan. 15, 2008 (Ex. 1011).
`7 Petitioner contends that the ’343 patent cannot claim a priority date earlier
`than March 15, 2013 and, therefore, is subject to the prior art provisions of
`35 U.S.C. § 102 as amended by the Leahy-Smith America Invents Act, Pub.
`L. No. 112-29, 125 Stat. 284, § 3(b)(1) (2011). Pet. 14. Patent Owner does
`not contend that the ’343 patent is entitled to an earlier filing date, and we
`need not reach the issue for purposes of this Decision.
`
`3
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`as to the prior art status of Rivera, Sylvan, Thomas, or Cooke. At this stage
`of the proceeding, Patent Owner does not challenge the prior art status of
`any of the asserted references, so we presume for purposes of this Decision
`that all references are prior art to the ’343 patent.
`
`D. The ’343 Patent
`The ’343 patent “is directed to a beverage brewing system, and in
`particular, to a brewing system for making hot beverages.” Ex. 1001, 1:18–
`19. In particular, it “is directed to a cartridge system adapted to brew a
`beverage through a brewer having a brewing chamber adapted to receive the
`cartridge system.” Id. at 4:24–26. “The cartridge system may include a
`holder adapted to receive a first beverage cartridge and a second beverage
`cartridge,” where the second cartridge is taller than the first. Id. at 4:50–53.
`“The holder may also have a first needle and a second needle,” where “[t]he
`first needle may be adapted to pierce through the first beverage cartridge,
`and the second needle may be adapted to pierce through the second beverage
`cartridge.” Id. at 4:55–60. The design of the cartridges and the placement of
`the needles within the holder are such that each type of cartridge is only
`pierced by the needle designed to pierce it, and not by the other needle. Id.
`at 4:61–65. Those features are shown in Figures 7 and 11 of the ’343 patent,
`which are reproduced below.
`
`4
`
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`IPR2016-01390
`Patent 9,144,343 B2
`
`
`
`
`
`Figure 7 depicts holder 116 with short cartridge 100 inserted and
`being pierced by first needle 130 and not second needle 132. Id. at 10:15–
`16, 10:20–23. Figure 11 depicts the same holder with tall cartridge 300
`inserted in place of the short cartridge of Figure 7. Id. at 13:12–13. The tall
`cartridge is pierced by second needle 132 but not by first needle 130. Id. at
`13:18–23.
`
`E. Illustrative Claim
`Of the challenged claims in the ’343 patent, claims 1 and 13 are
`independent. Claim 1 is illustrative of the challenged claims and reads as
`follows:
`
`5
`
`
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`IPR2016-01390
`Patent 9,144,343 B2
`
`1. A beverage brewer and cartridge combination, comprising:
`a first beverage cartridge having a beverage ingredient therein;
`a second beverage cartridge, having a beverage ingredient
`therein, that is taller than the first beverage cartridge; and
`a brewer including a cartridge holder, a movable cover having an
`open position, a partially open position and a closed position,
`a pump, an inlet needle operably connected to the pump, a
`first outlet needle, and a second outlet needle;
`wherein the first beverage cartridge and the brewer are
`respectively configured such that, when the first beverage
`cartridge is positioned within the cartridge holder, the inlet
`needle will pierce the first beverage cartridge, the first outlet
`needle will pierce the first beverage cartridge at a first fixed
`piercing location within the brewer, and the second outlet
`needle will not pierce the first beverage cartridge as the cover
`moves from the partially open position to the closed position;
`and
`wherein the second beverage cartridge and the brewer are
`respectively configured such that, when the second beverage
`cartridge is positioned within the cartridge holder, the inlet
`needle will pierce the second beverage cartridge, the first
`outlet needle will not pierce the second beverage cartridge,
`and the second outlet needle will pierce the second beverage
`cartridge at a second fixed piercing location within the brewer
`that is vertically offset from the first fixed piercing location
`as the cover moves from the partially open position to the
`closed position.
`Id. at 36:23–53.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`
`6
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Both parties ask that we construe four terms: “longitudinal extending
`discontinuity,” “beverage ingredient,” “vertically offset,” and “needle.” Pet.
`10–13; Prelim. Resp. 11–12. But the parties do not disagree on the proper
`construction of any of those terms (Prelim. Resp. 12), and Petitioner
`concedes that construction of some terms is not determinative of any issue
`before us. Pet. 11, 13. Thus, there is no actual dispute over those terms for
`us to resolve, and we need not construe any of those terms expressly. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“only those terms need be construed that are in controversy, and only
`to the extent necessary to resolve the controversy”).
`
`B. Asserted Obviousness over Castellani and Yoakim
`Petitioner proposes three grounds of unpatentability based, at least in
`part, on the combination of Castellani and Yoakim: 1) that claims 1–5, 7–8,
`10–11, and 13–18 would have been obvious to a person of ordinary skill in
`the art given the teachings of Castellani and Yoakim (Pet. 15–44); 2) that
`claims 9 and 19 would have been obvious given the teachings of Castellani,
`Yoakim, and Thomas (id. at 55–57); and 3) that claim 12 would have been
`obvious given the teachings of Castellani, Yoakim, and Cooke (id. at 57–
`58). As our decision on all three grounds turns on the combination of
`Castellani and Yoakim, we focus our discussion below on those references.
`
`7
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`1. Castellani
`Castellani teaches “capsules for producing a beverage, or more
`generally an edible product, by flowing hot and possibly pressurized water
`through the capsule, which contains at least one or more ingredients for the
`preparation of edible product.” Ex. 1002, 1:2–4. Specifically, Castellani
`teaches brewing two different types of coffee from the same cartridge.
`“Brewing espresso coffee requires flowing hot and pressurized water
`through the capsule containing coffee powder,” whereas “‘American coffee’
`is usually produced by flowing a large amount of water at reduced or zero
`pressure across a coffee powder bed.” Id. at 1:14–19. Castellani purports to
`solve the problem of making those two types of coffee “having variable
`organoleptic characteristics using the same single-serving package.” Id. at
`1:22–25. The disclosed method of doing so is illustrated in Figures 4, 5, and
`5A of Castellani, which are reproduced below.
`
`Figures 4 and 5 depict brewing chamber 15 with lower brewing
`chamber 15A including capsule recess 17. Id. at 10:15–24. Both figures
`show capsule 1 introduced into capsule recess 17. Id. at 10:22–24. Piercing
`
`
`
`8
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`members 27 and 29, containing hollow ports 27A and 29A, respectively, are
`placed on the bottom of capsule recess 17 projecting upward. Id. at 11:12–
`15. Piercing member 29 projects further into capsule recess 17 than does
`piercing member 27. Id. at 11:26–29.
`Capsule 1 may be introduced into capsule recess 17 in two alternative
`ways, one shown in Figure 4, and one shown in Figure 5. In Figure 4,
`capsule 1 is introduced so that wall portion 7A is pressed against piercing
`member 27, causing piercing member 27 to puncture wall portion 7A before
`brewing begins. Id. at 12:2–7. In Figure 5, capsule 1 is introduced so that
`wall portion 7A does not make contact with piercing member 27, and no
`puncturing of capsule 1 occurs before brewing begins. Id. at 12:8–12. As
`shown in Figure 5 (before brewing begins) and Figure 5A (after sufficient
`pressure develops inside capsule 1 during brewing), piercing member 29
`does not puncture capsule 1 until sufficient pressure develops inside
`capsule 1 to deform wall 7. Id. at 12:13–23.
`The two different possible orientations of capsule 1 in capsule
`recess 17 permit the same capsule to be used to conduct two different
`brewing operations. In the Figure 4 orientation, “water can flow at a
`relatively high flow rate and low pressure through the capsule.” Id. at 13:7–
`11. That produces “‘American’ coffee.” Id. at 13:12–13. In the Figure 5
`orientation, “brewing will be performed at a higher water pressure and lower
`flow rate, obtaining for example an espresso coffee with a top cream layer.”
`Id. at 13:14–27.
`Castellani describes other embodiments in which, in contrast to the
`embodiment illustrated in Figures 5 and 5A, piercing member 29 does
`partially or entirely perforate wall 7 of capsule 1 before brewing begins. Id.
`
`9
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`at 12:13–13:4. Each of those embodiments, however, is described as not
`permitting any liquid to exit capsule 1 via port 29A until the pressure inside
`capsule 1 rises to a sufficient value to deform wall 7. Id.
`
`2. Yoakim
`Yoakim “relates to a device for preparing a food product from a
`capsule,” where the device is adapted to accommodate capsules of at least
`two different sizes. Ex. 1003, 1:41–54, Figs. 8–11. That allows a large
`capsule to be used to brew “a concentrated drink in a cup of large capacity,”
`rather than forcing a user “to use two capsules of product in succession to
`obtain the desired concentration.” Id. at 1:30–37. Each of Yoakim’s
`capsules has a flat bottom when placed into the brewing device. Id. at Figs.
`3–6.
`
`3. Analysis
`Petitioner argues that a person of ordinary skill in the art would have
`found it obvious to combine the teachings of Castellani and those of
`Yoakim. Pet. 21–25. After reviewing the Petition, the Preliminary
`Response, and the evidence currently of record, we conclude that Petitioner
`has not shown sufficiently a reason to combine the teachings of Castellani
`and Yoakim.
`Petitioner does not show sufficiently that a person of ordinary skill in
`the art would have had a reason to make all the modifications needed to
`make the combination of Castellani and Yoakim work as intended.
`Petitioner identifies several modifications that would have been necessary in
`order for the combination to work both with the unmodified Castellani
`cartridges and with the shorter cartridges of Castellani’s design modified
`with Yoakim’s flat bottom. Pet. 24 (discussing reprogramming Castellani’s
`
`10
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`brewer to operate with tagless short cartridges and still retain Castellani’s
`ability to brew different beverages from the same tall cartridge). In addition,
`Petitioner’s declarant, Paul A. Phillips, testifies that “any modifications
`necessary to the piercing element 29” to enable coffee to be made using the
`modified cartridge would have been obvious. Ex. 1012 ¶ 69. But that
`testimony is insufficiently supported. It does not explain why Mr. Phillips is
`of the opinion that those modifications would have been obvious, nor does it
`even explain what those modifications would have been. “Expert testimony
`that does not disclose the underlying facts or data on which the opinion is
`based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Accordingly,
`the testimony of Mr. Phillips is insufficient to support the obviousness of the
`modifications to Castellani’s piercing element 29 that would have been
`necessary for the brewer to make coffee.
`An obviousness argument cannot succeed without Petitioner
`establishing a reason to combine the relevant references. There must be
`“some articulated reasoning with some rational underpinning” to combine
`the known elements in the manner required in the claim at issue. KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because Petitioner does not
`provide adequate “articulated reasoning” with respect to Castellani and
`Yoakim, we determine that Petitioner has not established a reasonable
`likelihood of prevailing in showing the obviousness of the challenged claims
`over any proposed ground of unpatentability requiring the combination of
`Castellani and Yoakim.
`
`C. Asserted Obviousness over Castellani, Rivera, and Sylvan
`Petitioner proposes three grounds of unpatentability based, at least in
`part, on the combination of Castellani, Rivera, and Sylvan: 1) that claims 1–
`
`11
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`5, 7–8, 10–11, and 13–18 would have been obvious to a person of ordinary
`skill in the art given the teachings of Castellani, Rivera, and Sylvan (Pet. 44–
`55); 2) that claims 9 and 19 would have been obvious given the teachings of
`Castellani, Rivera, Sylvan, and Thomas (id. at 55–57); and 3) that claim 12
`would have been obvious given the teachings of Castellani, Rivera, Sylvan,
`and Cooke (id. at 57–58). Again, our analysis focuses on the combination of
`Castellani, Rivera, and Sylvan, as it is dispositive of those grounds.
`
`1. Sylvan and Rivera
`Sylvan discloses a beverage filter cartridge with a base, a cover, and a
`filter. Ex. 1009, 3:48–53, Fig. 1. The filter “contains coffee powder,” and
`the base “has the shape of an inverted truncated cone.” Id. Rivera
`incorporates Sylvan by reference and further describes Sylvan’s cartridge.
`Ex. 1008, 1:25–31, 2:28–43, Fig. 1. It describes the cartridge as having a
`flat bottom and a frusto-conical shape. Id. at 2:28–43, Fig. 1. The cartridge
`“includes a pierceable shell 14 and contains brewing material 16.” Id. at
`2:32–33.
`
`2. Analysis
`Petitioner argues that a person of ordinary skill in the art would have
`found it obvious to combine the teachings of Castellani and those of Rivera
`and Sylvan. Id. at 45–46. After reviewing the Petition, the Preliminary
`Response, and the evidence currently of record, we conclude that Petitioner
`has not shown sufficiently a reason to combine the teachings of Castellani,
`Rivera, and Sylvan.
`Petitioner does not show sufficiently that a person of ordinary skill in
`the art would have had a reason to make all the modifications needed to
`make the combination of Castellani, Rivera, and Sylvan work as intended.
`
`12
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`Petitioner argues that the Castellani brewer would need little to no
`modification to work with the proposed flat-bottom cartridge. Pet. 46. But
`the evidence of record establishes that some modifications to the brewer
`would have been necessary, without establishing that those modifications
`would have been obvious to a person of ordinary skill in the art. Petitioner
`acknowledges that the size of the Castellani brewing chamber would need to
`be chosen properly, that Castellani’s tag sensor would need to be moved,
`and that the Castellani brewer would need to be reprogrammed. Id. at 47–
`48. Mr. Phillips testifies that those modifications would have been obvious,
`Ex. 1012 ¶¶ 70–71, but, as with the testimony discussed above, that
`testimony is unsupported. Accordingly, it is insufficient to support the
`obviousness of the modifications Petitioner argues would have been
`necessary for the proposed combination to work properly.
`In addition, Petitioner has not explained sufficiently how the teachings
`of Castellani and those of Rivera and Sylvan would have been combined to
`allow the Rivera/Sylvan cartridge to work with the Castellani brewer. As
`noted above, Petitioner argues that no changes to the Castellani brewing
`chamber other than changes to its size would be required to use the
`Castellani brewing chamber with the cartridges disclosed in Rivera and
`Sylvan. Pet. 46. That argument is supported by the testimony of Mr.
`Phillips. Ex. 1012 ¶ 70. Accordingly, Petitioner does not propose moving
`any part of the Castellani brewer from the locations described in Castellani.
`But the evidence of record establishes that Castellani’s piercing element 29
`is located so as to pierce the center of any cartridge inserted into the brewing
`chamber, while the cartridges disclosed in Rivera and Sylvan would not
`have worked if pierced in the center. Ex. 1002, Fig. 4A; Ex. 2011 ¶ 107.
`
`13
`
`
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`IPR2016-01390
`Patent 9,144,343 B2
`
`Petitioner does not direct us to sufficient record evidence that explains how a
`person of ordinary skill in the art would have modified those apparently
`incompatible components to achieve compatibility.
`Because Petitioner does not provide adequate “articulated reasoning,”
`we determine that Petitioner has not established a reasonable likelihood of
`prevailing in showing the obviousness of the challenged claims on the
`proposed grounds involving the combination of Castellani, Rivera, and
`Sylvan.
`
`III. CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence before us, we determine that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing that any of claims 1–5
`and 7–19 is unpatentable. Accordingly, we do not institute inter partes
`review of those claims on any of the grounds advanced by Petitioner.
`
`
`ORDER
`
`It is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied,
`and no inter partes review is instituted.
`
`
`
`
`
`
`14
`
`
`
`IPR2016-01390
`Patent 9,144,343 B2
`
`PETITIONER:
`
`Richard F. Giunta
`Robert E. Hunt
`WOLF GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`RHunt-PTAB@wolfgreenfield.com
`
`
`
`
`
`PATENT OWNER:
`
`Sang N. Dang
`BLUE CAPITAL LAW FIRM, P.C.
`sdang@bluecapitallaw.com
`
`15
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