On April 6, 2016, in an investigation involving coffee brewing capsules (Beverage Brewing Capsules, Inv. No. 929), the Commission reaffirmed that service of an ITC complaint alone, without any showing of pre-suit knowledge of the patent, meets the knowledge requirement for contributory and induced infringement. This opinion follows the Commission’s October 2015 decision in Television Sets, Inv. No. 910, which established that pre-suit knowledge of the patent was not required for contributory infringement and overruled prior ITC precedent to the contrary (see prior post).
In Certain Beverage Brewing Capsules, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-929, Complainant Adrian Rivera Maynez Enterprises (“ARM”) accused Respondents Solofill and DongGuan (“Respondents”) of infringing U.S. Patent No. 8,720,320 (the “’320 patent”) through their manufacture and importation of the K2 and K3 reusable brewing capsules. The ’320 patent claims an adaptor to enable single-serve brewing machines designed to brew from cup-shaped cartridges to also utilize pods.
On September 4, 2015, Administrative Law Judge Theodore R. Essex issued an Initial Determination (“ID”) finding that the accused products directly infringe the ’320 patent when combined with a brewer, but concluding that Respondents were not liable for indirect infringement because they did not have pre-suit knowledge of the patent. The Judge also found that the ’320 patent had sufficient written description under 35 U.S.C. § 112 to support the asserted claims.
Knowledge Requirement for Indirect Infringement
Citing its decision in Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, Inv. No. 337-TA-910 (Oct. 30, 2015), which issued after the ID and subsequent briefing in the instant case, the Commission re-affirmed its holding that service of an ITC complaint alone satisfies the knowledge requirement for indirect infringement. Op. at 18-19. Because the Commission also affirmed the Judge’s finding of direct infringement, it concluded Respondents were liable for both contributory and induced infringement. Id. at 24.
Respondents also contended that they did not know their actions constituted patent infringement because they had a good faith belief in noninfringement. Id. at 20-21. The Commission rejected that argument, noting that Respondents’ evidence was “nothing more than a conclusory assertion by an executive that their products do not practice two limitations of the asserted claims”—hardly enough to create a reasonable belief of noninfringement. Id. at 21.
Respondents next argued they were not liable for contributory infringement because their products have a substantial noninfringing use as a tea infuser. Id. at 22-23. But the Commission disagreed, finding that use as a tea infuser would still involve brewing tea from a pod in a single serve brewer (i.e., not loose leaf tea in some other vessel), a use that would be infringing. Id. at 23.
Invalidity for Lack of Written Description
Despite its infringement holding, the Commission found no Section 337 violation because it concluded, reversing the ID, that all asserted claims were invalid for lack of written description.
To satisfy the written description requirement, the Commission noted that the originally filed patent application must demonstrate the patentee’s possession of the full scope of the claimed invention. See LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Thus, a written description problem may arise when the claims change substantially during prosecution and the final claims are broader than the original disclosure.
In ARM’s application for the ’320 patent, all claims were directed to a “pod adaptor assembly” and a “brewing chamber for a beverage pod.” Op. at 25. After eight amendments, including an instance in which all pending claims were cancelled, the issued claims removed any reference to a “pod” and disclosed only a general “container … adapted to hold brewing material.” Id. The ID concluded that the claims were nonetheless supported, because a person of skill in the art would have understood that a “pod”—a term defined broadly in the specification—includes within its scope a “container with a separate filter containing coffee or an integrated filter.” Id. at 25-26.
The Commission disagreed. Citing to Federal Circuit case law warning that a narrow specification can limit claim scope, the Commission found that the “specification narrowly describes the invention of a device for modifying a cup-shaped beverage brewer to brew beverages from pods[,]” and thus it “does not support a claim for any sort of container adapted in any manner to hold brewing material.” Op. at 31 (citing USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332 (Fed. Cir. 2013)). The Commission also noted that the specification’s only use of the word “container” was in describing the prior art, which cannot satisfy the written description requirement. Id. Finally, the Commission rejected ARM’s arguments that the specification disclosed a container with a filter, noting that even if true, that would not provide full support for the broad description “container … adapted to hold brewing material.” Id. at 32.
Commissioner F. Scott Kieff wrote separately to dissent from the Commission’s written description finding. Commissioner Kieff noted the need for deference to the PTO when examining invalidity defenses. (Separate Opinion Dissenting-in-Part at 1.) He then cited the Federal Circuit’s guidance that the specification need not “recite the claimed invention in haec verba” to satisfy the written description requirement. Id. at 10. Because the specification explicitly provided a broad meaning for “pod,” explaining that it “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[,]” Commissioner Kieff concluded that the Judge was correct in finding the disclosure sufficient to support a description of a “container … adapted to hold brewing material.” Id. at 5-6, 10.