A Brewing Dispute: Coffee Pods and the Written Description Requirement
On May 23, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a decision finding claims that had been broadened during prosecution in a manner to encompass undisclosed embodiments to be invalid under the written description requirement of 35 U.S.C. § 112. Rivera v. ITC., Case No. 2016-1841 (“Rivera”). The patent at issue in Rivera is directed to single-brew coffee machines and explains that such machines are one of two types: the type that uses only flattened filtered packages or pods or the type that uses only cup-shaped filtered cartridges. The specification discloses a system that allows pods to be used in cup-type filtered single-brew coffee machines. Every embodiment of the specification teaches an adapter assembly that includes a cup-shaped container for receiving a pod that includes a filter.
Through seven years of prosecution, the asserted independent claim was amended and, in some respects, broadened to be a beverage brewer including a brewing chamber and container. Notably, the claim does not explicitly require the pod, adapter, or placement of the filter. Moreover, the claim does not claim anything that may be equated to a pod in the container.
Rivera filed a complaint with the International Trade Commission (ITC) asserting that Solofill LLC (“Solofill”) imported capsules infringed the asserted independent claim. Solofill capsules have an integrated mesh filter that fits in a cup-type brewer. In other words, the Solofill capsules omit the pod. The ITC found no violation because the asserted claims lacked written description.
On appeal, the CAFC also found that the claims lack written description support in the specification. In particular, the court found the claims do not identify the pod at all, much less the position of the pod and container. Thus, the claims would allow for an integrated system where the pod is integrated with or the same as the container. In contrast to the claims, the CAFC considered the pod to be a fundamental component that has a key characteristic of being separate from the container in which the pod fits because all embodiments of the specification have a separate pod and container. Thus, the asserted independent claim, having a broader claim breath than the originally disclosed subject matter, lacks written description support.
The CAFC further noted that even though the integrated system would be obvious to one skilled in the art, such obviousness could not be used to provide written description support. “The knowledge of ordinary artisans may be used to inform what is actually in the specification… but not to teach limitations that are not in the specification even if those limitations would be rendered obvious by the disclosure in the specification.”
For patent practitioners, Rivera serves as a reminder to ensure that the originally-filed application discloses all possible alternative embodiments so as to provide maximum flexibility for claim amendments that may later be desired.
