from the United States International Trade Commission in
Investigation No. 337-TA-929.
Kumar Kundu, Kundu PLLC, Washington, DC, argued for
appellants. Also represented by MATTHEW G. Cunningham.
John Needham, Office of General Counsel, United States
International Trade Commission, Washington, DC, argued for
appellee. Also represented by DOMINIC L. Bianchi, Wayne W.
Herrington, Sidney A. Rosenzweig.
Laurence M. Sandell, Mei & Mark LLP, Washington, DC,
argued for intervenor. Also represented by Lei Mel
Reyna, Linn, and Chen, Circuit Judges.
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
substantial evidence supports the Commission'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.
Disclosure in the '320 patent
'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 accommodate larger,
cup-shaped beverage filter cartridges." '320 patent,
col. 1, 11. 17-21. The Keurig® system, which uses
"K-Cups, " is an example of the latter system.
patent describes the Keurig® brewer in some detail, and
notes that it "inherently limits the use of the machine
to cup-shaped cartridges, " id. at col. 1, 11.
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, 11. 41-45. Because multiple machines are
inconvenient and expensive, the '320 patent identifies
"a need for brewers configured for cup-shaped cartridges
[to] also be used to brew beverages from pods."
Id. at col. 1, 11. 47-50.
'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, 1. 66 - col.
2, 1. 3.
explained in the specification, the '320 patent purports
to solve two problems: (1) the incompatibility between
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, 11. 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 compatibility between a single serve
beverage brewer and beverage pods." Id. at col.
1, 11. 6-9.
'320 patent includes several embodiments to effectuate
its purposes. Every embodiment in the '320 patent shows a
cup-shaped "receptacle, " adapted in various ways
to receive a discrete water permeable, coffee-containing
"pod." For example, the embodiment shown in Figure
3A, reproduced below, shows a "pod adaptor assembly,
" 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, 11. 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, 11.
remaining embodiments either show only a
"receptacle" without a filter, id. at
FIGS. 1A, IB, 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
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 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 ...