Case: Keurig, Inc. v. Sturm Foods, Inc., No. 2013-1072 (Fed. Cir. Oct. 17, 2013) (precedential). On appeal from the United States District Court for the District of Delaware. Before Lourie, Mayer, and O’Malley.

Procedural Posture: Plaintiff patent holder appealed the district court’s grant of summary judgment noninfringement based on patent exhaustion. CAFC affirmed.

  • Patent Exhaustion: The district court properly concluded that plaintiff’s right to assert infringement of the method claims of the asserted patents was exhausted where the defendant’s accused cartridges were for use with plaintiff’s coffee brewers and the coffee brewers were the commercial embodiment of the apparatus claims of the asserted patents. Because exhaustion applies equally to all claims within a patent, plaintiff’s initial sale of the coffee brewers exhausted its rights in both the method and apparatus claims of the asserted patents. The district court correctly declined to apply the substantial embodiment test because the coffee brewers sold by plaintiff were the commercial embodiment of the claims of the asserted patents.

O’Malley, concurring:

  • Patent Exhaustion: Plaintiff’s right to assert infringement against “normal methods of using” its coffee brewers was exhausted by its sale of the coffee brewers. However, in some cases, it may be appropriate to assess exhaustion on a claim-by-claim basis.