In Rivera v. International Trade Commission, Appeal No. 2016-1841 (Fed. Cir. May 23, 2017), the Federal Circuit affirmed the ITC’s decision invalidating Rivera’s patent under the written description requirement of 35 U.S.C. § 112. The opinion provides important lessons for those who draft and prosecute patent applications and also those who attempt to enforce them. Indeed, it appears that the prosecuting attorney might have avoided the ruling of invalidity and still have secured claims encompassing the product of the intervenor, Solofill, LLC, and the litigating attorney might have presented a different argument that would have led the Federal Circuit to approach the case differently and possibly to reach a different result.
Rivera’s patent disclosed a reusable K-cup that would work with pods of coffee (or other brewable material) in a standard single-cup brewing machine (such as the Keurig® system). The purpose of the invention was to provide an apparatus that makes it possible to use a single standard machine to brew both cup-shaped cartridges and pods, i.e. sealed, filter-paper packages enclosing brewable material such as coffee. Although the disclosed invention has other bells and whistles, it essentially comprises an empty reusable cup with a removable cap, permitting the user to place a pod in the cup, which is designed to fit into the standard single-cup brewing machine.
Solofill’s imported products were reusable K-cups that permit the standard single-cup system to be used with loose, ground coffee that the user pours into an empty cup before sealing the cup with its cap. The cup themselves, described as K2 and K3 cup-shaped containers, are made of reusable filter material such as metal mesh, which permits water to flow through the cup and extract solutes from the ground brewing material that the user poured into the cup.
Perhaps to capture Solofill’s products, Rivera amended his original claims from a “receptacle . . . adapted to provide a support surface for a pod,” or a “pod adaptor assembly” with a “housing having an interior region adapted to receive a beverage pod,” or a “brewing chamber for a beverage pod” with “a housing adapted to receive the beverage pod,” to instead “a container . . . adapted to hold brewing material.” None of the claims in the patent require or refer to a “pod.” Thus, the representative claim that the court addressed reads as follows:
5. A beverage brewer, comprising:
a brewing chamber;
a container, disposed within the brewing chamber and adapted to hold brewing material while brewed by a beverage brewer, the container comprising:
a receptacle configured to receive the brewing material; and
wherein the receptacle includes
a base, having an interior surface and an exterior surface, wherein at least a portion of the base is disposed a predetermined distance above a bottom surface of the brewing chamber, and
at least one sidewall extending upwardly from the interior surface of the base,
wherein the receptacle has at least one passageway that provides fluid flow from an interior of the receptacle to an exterior of the receptacle;
wherein the cover is adapted to sealingly engage with a top edge of the at least one sidewall, the cover including an opening, and
wherein the container is adapted to accept input fluid through the opening and to provide a corresponding outflow of fluid through the passageway;
an inlet port, adapted to provide the input fluid to the container; and
a needle-like structure, disposed below the base;
wherein the predetermined distance is selected such that a tip of the needle-like structure does not penetrate the exterior surface of the base.
Section 112 states simply, “The specification shall contain a written description of the invention . . . .” The Federal Circuit noted that a specification satisfies that requirement “when it ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date’ of the patent.” Slip op. at 8 (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).) According to the court, the issue was “whether the ‘pod adaptor assembly,’ ‘pod,’ and ‘receptacle’ disclosures in the patent as filed, support Rivera’s [claimed] ‘container . . . adapted to hold brewing material.’” Id. Obviously no written description issue would have existed if the claim had recited instead “a container . . . adapted to hold a pod.” That language would have required a structure capable of holding a pod, and perhaps other things, but would not have required an actual pod.
But since the asserted claims recited “adapted to hold brewing material,” Solofill argued invalidity under the written description requirement. The court’s entire discussion addressed Rivera’s primary argument, which was that the broad definition of “pod” in the patent “provided written description support for the claimed integrated filter cartridge.” Slip op. at 9 (emphasis added). But the issue under section 112 is whether the specification contains a written description of the claimed invention, not the accused product. Once the claims satisfy the written description requirement and the other requirements for validity, the question is whether they read on the accused product. But apparently because the parties “analyze[d] the written description issue under the assumption that the asserted claims read on Solofill’s K2 and K3 cup-shaped containers” and Rivera argued that the patent’s definition of “pod” provided written description support for the accused product, id.at 8-9, the court addressed that issue and not whether the written description supported the claimed invention.
The specification defined “pod” as follows: “As used herein, the term ‘pod’ is a broad term and shall have its ordinary meaning and shall include, but not be limited to, a package formed of a water permeable material and containing an amount of ground coffee or other beverage therein.” Id. at 9. Rivera argued that that definition provided written description support for the accused products because the K2 and K3 containers are water permeable and, when used, contain ground coffee.
The Federal Circuit rejected the argument because the specification clearly disclosed that the container and the pod were separate items, as shown in every embodiment of the patent, and none of the embodiments in the patent would work without a separate filter. “The distinction between ‘pods’ and cartridges permeates the entire patent.” Id. at 10. The court therefore concluded that “for the integral filter cartridge [i.e. the accused products] to be supported by the written description definition of a ‘pod’ it must act as both a ‘pod’ and a receptacle. But nothing in the specification shows that the ‘pod’ and the receptacle may be the same structure.” Id. at 11-12. And again, “The specification here does not teach a container with an integrated filter, and so, does not provide written description support for such a container . . . .” Id. at 14.
As noted above, this case provides important lessons for both prosecutors and litigators. Prosecutors must take care to draft claims of varying scope and to fully support all claim language in the written description portion of the specification. Departing from that language when amending claims may invite a written description defense, and it may do so unnecessarily when a claim defines structure. For example, in this case, if the claim recited “a container adapted to hold a pod,” the written description requirement would have been satisfied. Rivera still could have argued that the claims read on Solofill’s K2 and K3 cups. After all, how do the structures differ? Moreover, why couldn’t one insert a pod into Solofill’s cups? Indeed, a brief search on the internet reveals that an advantage of Solofill’s cups is that they can be used for both loose, ground coffee and pods. That the patent does not describe the accused cups should not matter as long as it describes the claimed invention and the claims read on the accused products. That is why generic dominant patents can read on undisclosed, even patentable, species that improve on the dominant generic invention.
As to lessons for litigators, Rivera apparently led the court to address the wrong issue, viz. whether Rivera’s patent described the accused product. The court correctly decided that it did not. But Rivera should have argued that the patent adequately described the claimed invention, i.e. that the disclosure of a receptacle adapted to hold a pod containing brewing material was sufficient to support a claim to a receptacle adapted to hold brewing material.