Rivera v. International Trade Commission , 857 F.3d 1315 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
ADRIAN RIVERA, ADRIAN RIVERA MAYNEZ
ENTERPRISES,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
SOLOFILL, LLC,
Intervenor
______________________
2016-1841
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-929.
______________________
Decided: May 23, 2017
______________________
SUDIP KUMAR KUNDU, Kundu PLLC, Washington, DC,
argued for appellants. Also represented by MATTHEW G.
CUNNINGHAM.
ROBERT JOHN NEEDHAM, Office of General Counsel,
United States International Trade Commission, Washing-
ton, DC, argued for appellee. Also represented by DOMINIC
L. BIANCHI, WAYNE W. HERRINGTON, SIDNEY A.
ROSENZWEIG.
2 RIVERA v. ITC
LAURENCE M. SANDELL, Mei & Mark LLP, Washing-
ton, DC, argued for intervenor. Also represented by LEI
MEI.
______________________
Before REYNA, LINN, and CHEN, Circuit Judges.
LINN, Circuit Judge.
Adrian Rivera and Adrian Rivera Maynez Enterprises
(collectively, “Rivera”) appeal from a divided decision by
the International Trade Commission, finding no violation
of Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337,
based on the Commission’s holding of invalidity of certain
asserted claims of Rivera’s U.S. Patent No. 8,720,320
(“’320 patent”), filed July 13, 2007, titled “Pod Adaptor
System for Single Service Beverage Brewers.” In re
Certain Beverage Brewing Capsules, Components Thereof,
and Products Containing the Same, Inv. No. 337-TA-929
(April 5, 2016) (Final) (“Beverage Capsules” and “Beverage
Capsules Dissent”).
Because substantial evidence supports the Commis-
sion’s holding that all asserted claims are invalid for lack
of written description, we affirm. We need not, and do
not, reach any of the alternative grounds for affirmance.
I. BACKGROUND
A. The Disclosure in the ’320 patent
The ’320 patent describes single-brew coffee machines
falling into two general categories. “Some machines have
brewing chambers configured to receive pods which are
small, flattened disk-shaped filter packages of beverage
extract, while other machines are configured to accommo-
date larger, cup-shaped beverage filter cartridges.” ’320
patent, col. 1, ll. 17–21. The Keurig® system, which uses
“K-Cups,” is an example of the latter system.
RIVERA v. ITC 3
The patent describes the Keurig® brewer in some de-
tail, and notes that it “inherently limits the use of the
machine to cup-shaped cartridges,” id. at col. 1, ll. 40–41,
so that “users of the Keurig machine . . . would have to
purchase a different machine to brew beverage from pods,
which are typically somewhat flattened disc shaped filter
paper packets containing coffee,” id. at col. 1, ll. 41–45.
Because multiple machines are inconvenient and expen-
sive, the ’320 patent identifies “a need for brewers config-
ured for cup-shaped cartridges [to] also be used to brew
beverages from pods.” Id. at col. 1, ll. 47–50.
The ’320 explicitly defines a “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 col. 1, l. 66 – col. 2, l. 3.
As explained in the specification, the ’320 patent pur-
ports to solve two problems: (1) the incompatibility be-
tween pod-based and cartridge-based systems; and (2) the
lack of flavor from single-service brewed coffee resulting
from the lack of tamping (i.e., contraction) of the coffee.
Id. at col. 1, ll. 11–62. The claims at issue here are only
concerned with the first problem and Rivera’s asserted
solution to it. The ’320 patent Abstract explains that
“[t]he assembly is especially designed for brewing pods in
brewers configured for cup-shaped beverage extract
cartridges.” The invention “more particularly relates to
an adaptor assembly configured to effect operative com-
patibility between a single serve beverage brewer and
beverage pods.” Id. at col. 1, ll. 6–9.
The ’320 patent includes several embodiments to ef-
fectuate its purposes. Every embodiment in the ’320
patent shows a cup-shaped “receptacle,” adapted in vari-
ous ways to receive a discrete water permeable, coffee-
containing “pod.” For example, the embodiment shown in
4 RIVERA v. ITC
Figure 3A, reproduced below, shows a “pod adaptor as-
sembly,” 300, which “generally comprises a receptacle
302” with “a substantially circular base 306 and sidewalls
308 extending upwardly from the base.” Id. at col. 5, ll.
40–43. “The base 306 has an annular raised portion 314
extending upwardly from a lower surface 316 of the base,”
which “provides a raised support surface 318 for a pod 320
so that the pod 320 does not contact and possibly block
the opening 324 for brewed coffee to flow through.” Id. at
col. 5, ll. 42–51.
The remaining embodiments either show only a “re-
ceptacle” without a filter, id. at FIGS. 1A, 1B, 1C, 2, 3B, 6,
or show a discrete “pod” with filter sitting inside the
receptacle, id. at FIGS. 4, 5. See also FIG. 1 (showing
prior art).
The patent was filed on July 13, 2007, claiming a “pod
adaptor assembly” with 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.” J. App’x at 2052–53. After almost seven
RIVERA v. ITC 5
years of prosecution and multiple amendments, the ’320
patent issued. None of the claims as issued included any
reference to a “pod,” “pod adaptor assembly,” or “brewing
chamber for a beverage pod.” Instead, the relevant claims
call for “a container . . . adapted to hold brewing materi-
al.” Representative claim 5 reads as follows:
5. A beverage brewer, comprising:
a brewing chamber;
a container, disposed within the brewing
chamber and adapted to hold brewing ma-
terial while brewed by a beverage brewer,
the container comprising:
a receptacle configured to receive the
brewing material; and
a cover;
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 bot-
tom surface of the brewing chamber,
and
at least one sidewall extending up-
wardly from the interior surface of
the base,
wherein the receptacle has at least
one passageway that provides fluid
flow from an interior of the recepta-
cle 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
6 RIVERA v. ITC
wherein the container is adapted to ac-
cept 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 se-
lected such that a tip of the needle-like
structure does not penetrate the exterior
surface of the base.
’320 patent, col. 8, l. 60 – col. 9, l. 23.
B. Procedural History
On September 9, 2014, Rivera filed a complaint with
the International Trade Commission (“Commission”),
alleging that Solofill, LLC (“Solofill”) was importing
beverage capsules that infringed claims 5–8 and 18–20 of
the ’320 patent, in violation of Section 337. Rivera there-
after withdrew its allegations with respect to claims 8 and
19, leaving currently pending claims 5–7, 18, and 20.
Solofill’s K2 and K3 beverage capsules are made to fit into
a Keurig® brewer, and include an integrated mesh filter
surrounding a space designed to accept loose coffee
grounds.
In an initial decision, the Administrative Law Judge
(“ALJ”) held that Rivera had established both the tech-
nical and economic prongs of the domestic industry re-
quirement, and Solofill had not proved invalidity of the
’320 patent. However, the ALJ found no violation of
§ 337, concluding that Rivera failed to show infringement.
In particular, the ALJ held that Solofill did not directly
infringe because Solofill only imported the cartridges, and
the claims required the combination of Solofill’s accused
RIVERA v. ITC 7
cartridges and a Keurig®-type brewer. The ALJ also held
that Solofill was not liable for induced or contributory
infringement because it did not have pre-suit knowledge
of the ’320 patent, and therefore lacked the required mens
rea for indirect infringement.
On review, the Commission also concluded that there
was no violation of § 337, but for different reasons. The
Commission held that, inter alia, asserted claims 5–7, 18,
and 20, were invalid for lack of written description, and
that claims 5 and 6 were additionally invalid as anticipat-
ed by U.S. Patent No. 6,079,315 to Beaulieu (“Beaulieu”).
Beverage Capsules at 36–52. Commissioner Kieff dissent-
ed-in-part, concluding that the specification as filed
satisfied the written description requirement. Commis-
sioner Kieff reasoned that the specification gave a “broad-
er-than-typical definition to the word ‘pod,’” which
included both closed packets and open packages of a
water permeable material containing ground coffee.
Beverage Capsule Dissent at 5.
Rivera timely appeals. We have jurisdiction to review
a final decision by the Commission under 28 U.S.C.
§ 1295(a)(6).
II. DISCUSSION
A. Standard of Review
Written description is a question of fact, which we re-
view for substantial evidence on appeal from the Interna-
tional Trade Commission. SSIH Equip. S.A. v. Int’l Trade
Comm’n, 718 F.2d 365, 371 (Fed. Cir. 1983). The accused
party must show a lack of written description by clear and
convincing evidence. Hynix Semiconductor v. Rambus
Inc., 645 F.3d 1336, 1351 (Fed. Cir. 2011).
B. Written Description
The specification of a patent as filed must “contain a
written description of the invention.” 35 U.S.C. § 112. A
8 RIVERA v. ITC
specification has an adequate written description 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. Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “[T]he test requires an objective inquiry into the
four corners of the specification from the perspective of a
person of ordinary skill in the art . . . . [to] show that the
inventor actually invented the invention claimed.” Id.
The basic issue in this case is whether the “pod adap-
tor assembly,” “pod,” and “receptacle” disclosures in the
patent as filed, support Rivera’s “container . . . adapted to
hold brewing material,” as recited in independent claim 5.
Rivera argues all the asserted claims together, and we
treat dependent claims 6–7, 18, and 20 as rising or falling
with independent claim 5.
The Commission concluded that the specification did
not provide the necessary written description support for
the full breadth of the asserted claims, because the speci-
fication was entirely focused on a “pod adaptor assembly”
or “brewing chamber,” and did not disclose a container
that was itself a pod or that contained an integrated filter.
The Commission only cited the explicit definition of “pod”
in its Background section, and cited the narrower “typi-
cal” definitions of “pod” in its analysis section. See Bever-
age Capsules at 26 (background section), 27 & n.13
(analysis section).
Both parties analyze the written description issue un-
der the assumption that the asserted claims read on
Solofill’s K2 and K3 cup-shaped containers. The salient
feature of the K2 and K3 containers is the integration of
the filter into the cup itself, allowing the insertion of loose
coffee into the receptacle. The parties agree that nothing
in the ’320 patent explicitly describes a pod adaptor
assembly with a filter integrated into the cartridge.
RIVERA v. ITC 9
Rivera’s primary argument is that the Commission
failed to apply the broad definition of a “pod” contained in
the specification, and that correctly applying that defini-
tion would have provided written description support for
the claimed integrated filter cartridge. Rivera reasons
that the integrated filter cartridge is simply a configura-
tion of the generic disclosure of a “pod.” The specification
explicitly defines a “pod”: “[A]s 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.” ’320 patent,
col. 1, l. 66 – col. 2, l. 3. According to Rivera, this defini-
tion teaches a broad genus, which provides written de-
scription support for the species shown in the
specification’s embodiments (with a “pod” including a
filter distinct from the cartridge), and the species repre-
sented by the accused products (with a filter integral to
the cartridge).
The Commission and Solofill respond that the broader
definition of a “pod” does not provide written description
support for the claimed “container . . . adapted to hold
brewing material” (i.e., a container with an integral filter)
because: (1) every embodiment and teaching in the speci-
fication shows the “pod” and the cartridge or container as
distinct elements; (2) the distinction of the “pod” from the
cartridge or container is fundamental to the problem and
solution taught in the specification; and (3) the embodi-
ments shown in the specification would not work without
a separate filter.
We agree with the Commission and Solofill. The un-
derlying concern addressed by the ’320 patent is enabling
compatibility between pods used in pod-type beverage
brewers and cartridges used in cartridge-type beverage
brewers. See ’320 patent, Abstract (“The assembly is
especially designed for brewing pods in brewers config-
ured for cup-shaped beverage extract cartridges.”); id. at
10 RIVERA v. ITC
col. 1, ll. 7–9 (“This invention . . . more particularly,
relates to an adaptor assembly configured to effect opera-
tive compatibility between a single serve beverage brewer
and beverage pods.”); id. at col. 1, ll. 17–21 (distinguishing
machines “configured to receive pods” and machines
“configured to accommodate larger, cup-shaped beverage
filter cartridges”); id. at col. 1, ll. 39–45 (explaining that
Keurig machines are “inherently limit[ed]” to using cup-
shaped cartridges, and users “would have to purchase a
different machine to brew beverage from pods”); id. at col.
1, ll. 47–50 (“[T]here is a need for an apparatus and
method for modifying single serve beverage brewers
configured for cup-shaped cartridges so that they can also
be used to brew beverages from pods.”).
The distinction between “pods” and cartridges perme-
ates the entire patent. There is no hint or discussion of a
cartridge or pod adaptor assembly or receptacle that also
serves as the “pod.” Instead, the specification explains
how the cartridge may be adapted to accept a separate
“pod” to be used inside the cartridge. For example, the
embodiment in Figure 1A calls for a “cup-shaped recepta-
cle” with “protrusions 122 [to] collectively provide a
plurality of spaced apart raised surfaces for the pod to
rest against.” ’320 patent, col. 4, ll. 1–2, 42–44; see also
id. at col. 4, ll. 48–49 (explaining that the protrusions may
also be configured as in Figure 1B); id. at col. 5, ll. 16–20
(describing the “pod adapter assembly 200” of Figure 2,
“compris[ing] a cup shaped receptacle 202 adapted to
receive a pod”). Likewise, Figure 3A shows an embodi-
ment of the “pod adaptor assembly 300” with a “receptacle
302” with a “raised portion 314 [that] provides a raised
support surface 318 for a pod 320 so that the pod 320 does
not contact and possibly block the opening 324 for brewed
coffee to flow through.” Id. at col. 5, ll. 38–51.
This relationship between the pod adaptor assembly,
the receptacle (i.e., cartridge) and the pod carries through
every embodiment. See id. at col. 5, ll. 61–62 (explaining
RIVERA v. ITC 11
that Figure 3B is an implementation of the receptacle in
the embodiment in Figure 3A); id. at col. 6, ll. 11–15
(explaining that in Figure 4, “a beverage pod 404, prefer-
able containing ground coffee, is positioned inside the
receptacle 302 of the assembly 100,” such that the “pod
402 preferably fits snugly inside the receptacle 302 and
rests against the protrusion 330.”); id. at col. 6, ll. 35–46
(identifying the pod 502 as fitting inside the receptacle
504, and showing the pod being pressed against the cover
of the receptacle to compact the coffee within the pod); id.
at col. 7, ll. 22–26, ll. 50–65 (describing Figure 6 as com-
prising a “cup-shaped housing 602” “sized to receive a
circular beverage pod,” which may be compressed). As
confirmed by Solofill’s expert, Dr. Howle, “[n]one of the
embodiments in the ’320 patent resemble [Rivera’s]
[integrated filter] Eco-Fill products because none of the
described embodiments are adapted to be used without a
separate ‘pod.’” J. App’x 2193.
Indeed, Dr. Howle explained that without a separate
“pod,” the assemblies shown in the ’320 patent would not
function, because inserting loose-grain coffee or loose-leaf
tea into the containers shown in the embodiments would
clog the brewing chamber. Id. Dr. Howle concluded that
“[o]ne of ordinary skill would therefore read the descrip-
tion of the ’320 patent as limited to embodiments that
require use of a separate ‘pod.’” Id.
The disclosure of the ’320 patent consistently de-
scribes an invention in which the “pod” and the receptacle
or container are distinct components. Thus, even apply-
ing the “broad” definition of “pod” as “a package formed of
a water permeable material and containing an amount of
ground coffee or other beverage therein,” written descrip-
tion support for broad claims covering a receptacle with
integrated filter such as Solofill’s accused products and
Rivera’s Eco-Fill products is lacking. Whatever a “pod” is,
the specification indicates that it is distinct from the
receptacle; for the integral filter cartridge to be supported
12 RIVERA v. ITC
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. Indeed, Rivera’s expert, Mr.
Phillips, agreed that “the patent is silent on [the] option”
of using an integrated filter media or integrated filter
mesh in a pod adaptor assembly. Id. at 721. Moreover,
Mr. Phillips agreed that a “filter cup,” i.e. a cup-shaped
cartridge with an integrated filter that would fit into a
pod brewing chamber as shown in Figure 6, would not be
a “pod” “because a pod implies to me some sort of a con-
struction that . . . has been prepared and sealed, and that
filter cup is still an open device.” Id. at 719–20.
Rivera’s argument essentially requires that an ordi-
nary artisan would read the broad definition of “pod” as
encompassing anything containing a water permeable
material that contains brewing material, in whatever
form. Appellants’s Opening Br. 25. For this, Rivera relies
on Honeywell Int’l Inc. v. United States, 609 F.3d 1292,
1301 (Fed. Cir. 2010), in which we held that the teaching
of a CRT-type monitor provided written description sup-
port for other types of monitors. Rivera argues that he
was “not required to recite in the ’320 patent the multi-
tude of well-known water permeable materials.” Appel-
lants’s Opening Br. 28. This argument is inapposite. The
question is not whether the disclosure of one water per-
meable material (equivalent to the disclosure of a CRT
monitor in Honeywell) supports the use of other water
permeable materials. Rather, the question is whether a
pod adaptor assembly intended to allow compatibility
between distinct brewing systems, also supports an
undisclosed configuration that eliminates a fundamental
component of one of those systems (i.e., the “pod”) through
integration. It does not.
Moreover, we believe that the Commission did not use
the citations to the “typical” definitions of “pod” contained
in the specification in a limiting way, but merely to
RIVERA v. ITC 13
demonstrate that the purpose of the ’320 patent was
bridging the compatibility gap between pod-type beverage
brewers and cup-shaped cartridge brewers. See Beverage
Capsules at 27. As described above, a key characteristic
of a “pod” is that it is separate from the claimed container
into which it fits. The Commission did not require that
the pod be “small,” “flattened,” “disk-shaped,” or composed
of “filter paper,” as provided by the typical definitions of
“pod.” We thus reject Rivera’s argument that the Com-
mission’s failure to apply the “broad” definition of “pod” is
reversible error.
Finally, Rivera argues that the background
knowledge of those skilled in the art can supplement the
teaching in the specification to provide written description
support. For this proposition, Rivera relies on Boston
Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353,
1366 (Fed. Cir. 2011) and Falkner v. Inglis, 448 F.3d
1357, 1367–68 (Fed. Cir. 2006). Rivera argues as follows:
(1) ordinary artisans recognized the need for some type of
filter in the cartridge; (2) ordinary artisans were aware of
the availability of an integrated filter; (3) nothing in the
patent limits the use of a filter to an enclosed package to
put into a separate cartridge; and therefore (4) the ’320
patent provides written description support for an inte-
grated filter.
We reject Rivera’s argument. As we explained in Ari-
ad, the written description inquiry looks to “the four
corners of the specification” to discern the extent to which
the inventor(s) had possession of the invention as broadly
claimed. Ariad, 598 F.3d at 1351; see also Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)
(“It is the disclosures of the applications that count.”).
The knowledge of ordinary artisans may be used to inform
what is actually in the specification, see Lockwood, 107
F.3d at 1571, but not to teach limitations that are not in
the specification, even if those limitations would be ren-
dered obvious by the disclosure in the specification. Id. at
14 RIVERA v. ITC
1571–72. The specification here does not teach a contain-
er with an integrated filter, and so, does not provide
written description support for such a container, even if
that type of container might be rendered obvious by the
specification.
Falkner and Boston Scientific are not to the contrary.
In Falkner, we held that a disclosure in an application of
vaccinia, a type of poxvirus, provided sufficient written
description for a claim requiring that a mutation in the
vaccinia was to an “essential gene.” 448 F.3d at 1366.
Although the patent did not teach the gene sequence of
the essential gene, we held that the specification provided
adequate written description support because the se-
quence of the essential gene was well-known in the art.
Id. Unlike Falkner, where the application disclosed the
use of essential genes in a poxvirus and simply did not
include the well-known sequence, the patent here does not
teach the identity of the pod and the pod adaptor assem-
bly. Boston Scientific, too, is inapposite. There, we noted
that “[b]ecause the specification is viewed from the per-
spective of one of skill, in some circumstances, a patentee
may rely on information that is ‘well-known in the art’ for
purposes of meeting the written description requirement.”
647 F.3d at 1366 (citing Falkner, 448 F.3d at 1366-68).
However, nothing in the ’320 patent disclosure indicates
the possibility of a cartridge with an integrated filter.
The gap-filling Rivera attempts here is thus non-
analogous to that allowed under Boston Scientific.
As the Commission correctly explained, this case is
substantially similar to several of our cases holding
claims unsupported by the written description, in which
the specification fails to teach a potential configuration of
elements. For example, in ICU Medical, the specification
(and the initially filed claims) included a medical device
valve for the transmission of fluids requiring a spike to
pierce a seal in an intravenous medicine delivery setup.
ICU Medical, Inc. v. Alaris Medical Sys., Inc., 558 F.3d
RIVERA v. ITC 15
1368, 1377 (Fed. Cir. 2009). A group of later filed claims
eliminated the spike limitation. We held that the specifi-
cation only described medical valves with spikes, and that
the specification could not support claims for spikeless
valves, even though ordinary artisans would have under-
stood that the slits originally made by the spikes could
also have been made by compression of a (disclosed)
preslit seal. Id. at 1378–79 (“The fact that compression of
a preslit seal would allow an opening for fluid transmis-
sion [(and thus accomplish what the spike accomplished)]
does not answer the question of whether the claimed
invention nevertheless requires a spike capable of pierc-
ing the seal in preslit embodiments.”). The ’320 patent
similarly discloses only a pod adapter assembly with a
separate “pod.” That ordinary artisans may have under-
stood that the filter could be incorporated into the car-
tridge does not save the claims—ordinary artisans would
not have understood that Rivera had possession of an
integrated filter system. The “broad” definition of a pod
does not change that—however broad “pod” is, it must
still be distinct from pod adapter assembly.
Rivera attempts to distinguish ICU Medical, arguing
that the broad definition of “pod” here also includes
integral filter cartridges. As explained above, even the
broad definition of “pod” does not provide such a teaching.
We thus reject Rivera’s argument.
CONCLUSION
For the foregoing reasons, we affirm the Commission’s
conclusion that claims 5–7, 18, and 20 are invalid for lack
of written description and that Solofill thus did not violate
Section 337. We need not and do not consider the Com-
missioner’s holding with respect to anticipation of claims
5 and 6, nor the alternative grounds for affirmance pre-
sented by Solofill.
AFFIRMED