May 23, 2017

Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them

By Bryan K. Wheelock, Principal

In Rivera v. ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the International Trade Commission’s decision that there was no violation of 19 U.S.C. §1337, because the claims of U.S. Patent No. 8,720,320 were invalid for lack of a written description.

The ‘320 patent relates to single brew coffee machines, which the patent divides into two categories: those configured to receive pods — small, flattened disk-shaped filter packages of beverage extract — and those configured to accommodate larger, cup-shaped beverage filter cartridges.  The ‘320 patent describes the invention as an adapter assembly configured to effect operative compatibility between a single serve beverage brewer and beverage pods.

The Federal Circuit noted that every embodiment in the ’320 patent shows a cup-shaped “receptacle” adapted to receive a pod.  Although the claims originally filed referenced a pod adapter assembly, after seven years of prosecution none of the claims included any reference to a pod or a pod adapter assembly.  The accused products were adapted to receive loose coffee grounds.

The issue on appeal was whether the “pod adapter assembly,” “pod” and “receptacle” disclosures in the patent application as filed, support the patent claim element “container . . . adapted to hold brewing material.”  The Commission concluded that the specification did not provide the necessary written description support for the full breadth of the asserted claims, because the specification was entirely focused on a “pod adapter assembly” or “brewing chamber,” and did not disclose a container that was itself a pod or that contained an integrated filter.

The Federal Circuit noted that both parties analyze the written description issue under the assumption that the asserted claims read on the accused cup-shaped containers.  While the parties further agreed that nothing in the ’320 patent explicitly described a pod adapter assembly with a filter integrated into the cartridge, Rivera argued the broad definition that 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.

in the specification provided adequate support.  The Federal Circuit rejected Rivera’s argument, agreeing with the ITC and the intervenor.  The Federal Circuit noted the “underlying concern” of the ‘320 patent was compatibility between pods and cartridges.  The Federal Circuit quoted extensively from the specification, noting the distinction between pods and cartridges “permeates the entire patent.”  The Federal Circuit said there was no hint or discussion of a cartridge or pod adapter assembly or receptacle that also serves as the “pod.”  The Federal Circuit noted that the distinction carries through to every embodiment.  The Federal Circuit concluded that the “broad” definition of a pod does not change the fact that however broad “pod” is, it must still be distinct from pod adapter assembly.

The Federal Circuit made of point of stating that the Patent Owner agreed that the claim covered the accused product.  Setting the scope set the question of adequate written description.  Otherwise, construing a claim in view of the specification would result in a narrower scope, rather than invalidity. Perhaps the claim could have been saved, but it wouldn’t cover what the patent owner wanted it to.

While the focus of patent scope is rightly on crafting the claims, to get the full scope of the carefully crafted claims, the specification needs to provide a written description and an enable disclosure.