On May 23, 2017, the U.S. Court of Appeals for the Federal Circuit issued its precedential opinion in Adrian Rivera et al. v. ITC (2016-1841). This was an appeal from the International Trade Commission’s (“the Commission”) determination finding no violation of Section 337 in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-929).
By way of background, the investigation is based on an August 4, 2014 complaint filed by ARM Enterprises, Inc. and Adrian Rivera (“Rivera”) alleging violation of Section 337 in the importation into the U.S. and sale of certain beverage brewing capsules, components thereof, and products containing the same that infringe one or more claims of U.S. Patent No. 8,720,320 (“the ’320 patent”). See our August 6, 2014 and September 11, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
On September 4, 2015, ALJ Essex issued his final Initial Determination (“ID”) determining that no violation of Section 337 has occurred because Rivera failed to prove all elements of infringement. The Commission determined to review several aspects of the ID, and then also determined that there was no violation of Section 337, but for different reasons. Specifically, the Commission held that the asserted claims were invalid for lack of written description, and that a subset of the claims were invalid as anticipated. Rivera appealed the Commission’s decision to the Federal Circuit.
The Federal Circuit affirmed the Commission’s determination with regard to written description, and did not reach any other grounds for affirmance.
According to the opinion, the basic issue is whether the “pod adapter assembly,” “pod,” and “receptacle” disclosures in the patent support Rivera’s “container...adapted to hold brewing material” as claimed. The Commission concluded that the specification did not provide written support for this term because the specification was “entirely focused” on a pod adaptor assembly or brewing chamber and did not disclose a container that was a pod or that contained an integrated filter.
On appeal, both parties analyzed written description under the assumption that the asserted claims read on Solofill’s pod containers having a filter integrated into the cup itself, allowing for insertion of loose coffee into the receptacle. And, the parties agree that nothing in the ’320 patent explicitly describes a pod adapter assembly with a filter integrated into the cartridge.
Rivera primarily argued that the Commission failed to apply the broad definition of pod from the specification, and that correctly applying that definition would have provided written description support. The Commission and Solofill argued that even the broader definition does not provide written description for the claimed “container...adapted to hold brewing material” because every embodiment and teaching in the specification shows the pod and cartridge as distinct elements, distinguishing the pod from the container is fundamental to solving the problem in the art, and the embodiment shown in the specification would not work without a separate filter.
The Federal Circuit agreed with the Commission and Solofill, noting that the distinction between pods and cartridges permeates the entire patent, and there is no discussion of a cartridge or pod assembly that also serves as the pod. The Court also credited expert testimony asserting that without a separate pod, the assemblies in the ’320 patent would not function. The Court also rejected Rivera’s assertion that the background knowledge of those skilled in the art could supplement the teaching in the specification, reiterating that the written description inquiry looks only to the four corners of the patent.
As such, the Federal Circuit affirmed the case, finding that the Commission had substantial evidence supporting its determination of a finding of no violation of Section 337.