Addressing the issue of written description, the US Court of Appeals for the Federal Circuit affirmed an International Trade Commission (ITC) decision finding that a patent for a coffee machine adaptor assembly lacked written support for its claims. Adrian Rivera, et al. v. International Trade Commission, et al., Case No. 16-1841 (Fed. Cir., May 23, 2017) (Linn, J).

Rivera’s patent described an adaptor system that allowed automatic coffee brewers that were intended for cup-shaped filter cartridges to also use “pods,” defined in the specification as water-permeable packages containing ground coffee. Every embodiment described in the patent showed the problem of incompatibility between the two systems being solved by adapting a cup-shaped receptacle system to accept coffee-containing pods. After seven years of prosecution, however, the claims had dropped any reference to a pod or pod adaptor, and more broadly claimed a brewer with a container adapted to hold brewing material. Four months after issuance, Rivera filed a complaint with the ITC against Solofill, which imported cup-shaped beverage capsules with a mesh filter to accept loose coffee grounds. The ITC concluded that the patent was not infringed and was invalid for a lack of written description. Rivera appealed.

Although Rivera’s definition of “pod” was broad, the Federal Circuit agreed that it did not cover “a container . . . adapted to hold brewing material” because every described embodiment had the pod and container as separate components. In fact, the distinct separation of those arguments permeated the patent and created exactly the problem that the Rivera adaptor intended to solve. Therefore, even Rivera’s broad description of a pod could not encompass the accused receptacle, which had added a filter to effectively make the container also a pod. Rivera’s description of an adaptor for a sealed, coffee-containing pod could not support an undisclosed configuration that eliminated the pod—a fundamental component of the system—through integration.

Rivera argued that the knowledge of a person of ordinary skill in the art could overcome the deficiencies in the written description because the person of skill would recognize the need for some kind of filter, know that filters existed, understand that the patent did not exclude filters and therefore understand that the written description included filters. The Federal Circuit rejected this argument, noting that the written description inquiry focuses on “the four corners of the specification.” The person of skill’s knowledge can only be used to inform what is in the specification, not fill gaps with new, or even obvious, limitations. Just because a person of skill would have understood that a filter could be added does not mean that such a person would have understood that Rivera had possession of such an integrated system.