by Dennis Crouch
In Teashot v. Green Mountain Coffee, the Federal Circuit has affirmed the lower court determination that tea-filled K-Cups do not infringe T-Shot’s Patent No. 5,895,672.
K-Cups originally included only disposable coffee pods for use in Keurig machines, but now also include tea-pods for quickly brewing tea. T-shot’s patent covers a disposable tea-pod, but the asserted claims require that the pod be a “sealed body . . . constructed of a water-permeable material which allows flow of a fluid through said sealed body to produce a tea extract from said tea composition.” The figures from the patent look like the disposable coffee-pods that you might find in a hotel room – essentially tea wrapped and sealed within a coffee filter. One feature of the patent is that the pod include both tea leaves as well as some instant tea powder that allows for very quick brewing.
At first glance, K-Cups do not appear to be made of a water-permeable membrane but rather are constructed of a impermeable combination of plastic and metal foil. The Keurig machines operate by first puncturing a hole in both the top and bottom of the K-Cup and then sending water through the holes as shown in the schematic below.
T-shot’s infringement argument was that – once punctured – the K-cup also becomes water permeable. (Of course, the patentee couched this as a claim-construction issue in order to receive de novo review). On appeal, the Federal Circuit rejected the argument, finding that the claim requires the pod to simultaneously be a “sealed body” and “water permeable” and that the hole-puncturing scheme does not fit within that requirement.
Doctrine of Equivalents: In a move that is seemingly increasingly common, the Colorado district court refused to allow the patentee to amend its infringement contentions following the claim construction decision in order to include allegations of infringement under the doctrine of equivalents.
The proposed doctrine of equivalents claim was not disclosed in the patentee’s original or supplemental infringement contentions nor in response to any interrogatory. As a discovery sanction under Fed. R. Civ. Pro. 37, the district court refused to allow the new infringement theory to be presented — writing “Plaintiff
waived its right to raise the doctrine of equivalents by failing to timely disclose it as an infringement theory.” On appeal, the Federal Circuit affirmed that holding.
[As a side-note, the doctrine of equivalents theory here might have been viable given that the patent was issued without amendment.]
I took a look at the specification to see how the patentee defined “water-permeable material.” I expected to find language that would support the CAFC’s finding, like: “the material is a filter or membrane with a pore size that retains solids while allowing tea to pass through.”
To my surprise, I find language that directly contradicts the CAFC’s finding:
Seems like the patentee clearly defined “water-permeable material” to include a material with holes.
The CAFC’s statement that “sealed body” must have been defined to exclude the presence of holes does not comport with this statement in the specification. It’s further noteworthy that the specification doesn’t simply mention this as one possibility, but described as the preferred embodiment.
It’s certainly possible that the definition was limited during prosecution, and that PHE would constrain the term “material” to mean a membrane – but I don’t see any such evidence.
Just another data point in the trend toward an extremely patentee-hostile patent system. The U.S. patent system has been down this road before, and came to regret its actions.
Wow…I was OK with this ruling until reading this comment…now I’m very depressed.
Well, some good news, I suppose: I misread the specification. Correction below (see 5.2.3).
The U.S. patent system has been down this road before, and came to regret its actions.
The “US patent system” doesn’t have feelings.
Moreover, most of the “regrets” felt by lawmakers and judges and patent attorneys and much of the public these days are “regrets” over the patent-free-for-all that arose in the wake of the 1952 patent act and some terribly short-sighted decisions about information-related patents (which are slowly being corrected).
Most importantly, however, there is no evidence of “anti-patent hostility” in this case. The result was mandated by the facts and the straightforward application of fundamental rules of claim construction. Here’s the claim:
1. A tea extraction system for production of a serving of tea extract in a coffee brewing device, comprising:
(a) a tea extraction container for containing a tea composition, said tea extraction container comprising a sealed body having at least one internal compartment, said internal compartment containing said tea composition;
wherein said sealed body is constructed of a water-permeable material which allows flow of a fluid through said sealed body to produce a tea extract from said tea composition; and,
(b) a tea composition comprising from about 2 grams to about 10 grams of tea having a particle size of from about 0.40 mm to about 0.75 mm.
Note the plain language of the claim. It doesn’t say that the “tea-carrying body is water permeable” which is how any normal person would have written the claim to mean what you apparently wish it meant. Instead it says that the “sealed body” is constructed of a water-permeable material.
Any skilled patent attorney would recognize that the term “water permeable material” is a key term in the claim. Any skilled patent attorney would know that he/she should expressly define the term stating that a “water permeable material includes perforated materials, e.g., foil, that are otherwise insoluble” or even “water impermeable materials that are puncturable” if he/she expected those embodiments to be included within the claim scope. Any skilled patent attorney would know that he/she should include a description of both embodiments (bodies made of water permeable materials and bodies of made of water-impermeable materials that are perforated) in the specification if he/she had any doubts whatsoever about what potential infringers would argue or what the prior art disclosed.
But what happened here? Apparently someone believed that “ambiguous is better” or perhaps they believed that “we can always make some argument later.” That didn’t work out very well here.
The passage you cited doesn’t even include the phrase “sealed body” which is referred to throughout the spec as composed of a “water soluble material.” How can that passage possibly provide the expansive definition of the term sought by the patentee?
Finally, just in case there’s any confusion, be aware that the picture which appears in Dennis’ post and in the opinion is a picture of the allegedly infringing device, not an embodiment of the invention disclosed in the spec.
This case isn’t “anti-patent.” It’s a good example of how not to write a specification and claims. Wise patent attorneys will read it carefully and learn from it.
What happene here is apparently the reading span stopped short of the phrase “which allows.”
What happene here is apparently the reading span stopped short of the phrase “which allows.”
I’ve no idea what point you are trying to make but it sounds like you are attacking somebody’s “reading span” (whatever that means).
Did you intend to contribute to the discussion of this case or are you just doing your usual “crazy person” imitation?
Nothing crazy and no attack at all.
You just might want to read the claim a bit more slowly (and completely) before you attack. It appears that you skipped a rather important limitation.
You just might want to read the claim a bit more slowly (and completely) before you attack. It appears that you skipped a rather important limitation.
I read the claim numerous times. I also read the decision. I also read the specification. I also know what “sealed” means and I know what “water permeable” means.
Please work much harder to spit it out the point you think you are making, “anon”, rather than simply launching into attacks on the reading comprehension of people who read and write far beter than you ever have or will.
For starters, learn how to type out your thoughts in assertive sentences. That way nobody has to guess about what you’re talking about. As an added bonus, you might realize while you’re typing that what you’re typing is untrue or misses the point.
Seriously. Give it a shot.
Or keep relying on Dennis to coddle you and shield you from people who are far, far more capable and intelligent than you’ll ever be.
“I read [ _] numerous times… I also know”
Apparently you have let your “sniff” factor overpower your reading capability – for the reasons already given. Your “knowing” missed the item pointed out.
“Please work much harder”
Um, why? As I mentioned, there was no “attack” on my end. I merely and helpfully pointed out that you overlooked a phrase that is important in understanding a claim limitation. I did this politely enough and “in an assertive enough sentence (perhaps you missed the day in school when they taught subtlety). And as subtle as my correction was, there was need be no guessing here. My pointing out your miss has nothing AT ALL to do with me being “untrue” or missing a point. That you attempt to spin this in that direction is rather odd. Why do you wish to draw even more attention to the error underlying your attack?
“coddle and shield… from people who are far, far more capable and intelligent”
Now this is really odd. This goes across as some type of veiled threat and it is exceptionally unclear just how you think that I am being “coddled” and shielded. If (again) you mean that your mantra of poor rhetorical t001 use is limited, then you REALLY need to rethink just what “capable and intelligent” people use when debating points of law. That you depend on those types of t001s is one thing. That you really believe that those are the tools displaying capability and intelligence says far more about you than you might care to realize.
The time has come after a long eight years for you to elevate your game Malcolm.
(Note as well the techniques used by EG and David himself in further discussing the issue. Try for that tone, please)
“anon: I did this politely enough and “in an assertive enough sentence (perhaps you missed the day in school when they taught subtlety).
More insults? Really? I know what “subtlety” is.
And still haven’t articulated out any error in my comment or in the claim construction by the Federal Circuit.
Maybe it’s time to think about giving up.
Note as well the techniques used by EG and David himself in further discussing the issue
My technique was to read the claims, the specification and the opinion carefully before reaching my conclusion. EG and David appear to have done that and we all agree that the holding here is correct.
Don’t confuse ends and means to those ends, Malcolm.
You are seeing “insults” where none exist.
Your error in missing the phrase still exists – no matter the continued conversation from David and EG. You can continue to pretend otherwise, but as they say “and yet it still moves”
Sad it is that your error in black and white is sought to be denied. Looking at the end result and ignoring the path to get there only leads to sloppy – or in some cases – nonexistent, reasoning.
Just in case it isn’t obvious to anyone already, be aware that I mistakenly substituted the term “soluble” for “permeable” in a couple instances in my 5.2 comment. Apologies for any confusion.
That’s true, but I was looking for some further definition in the specification about the meaning of the term: “water-permeable material.”
I think that you’re interpreting the term “sealed” as necessarily meaning: “absolutely, hermetically sealed across the entire surface.” However, it doesn’t have to have that meaning, and the applicant has a right to define it differently (“lexicographer,” etc.)
However, I took another look at the specification, and found a different explanation than I posted above: the “perforation” language does not describe the surface of the container, but the surfaces of the compartments within the container. That aspect makes the CAFC’s opinion completely reasonable and consistent with the specification.
I’m pleased to have been incorrect. I had expected to find that the specification supported the CAFC’s finding, and was dismayed to find language that seemed to contradict it.
Just as the meaning of “sealed” depends on context, so does “perforated”. For example, are not the materials with which tea bags and coffee pads are conventionally made conventionally called “perforated” because they are seen under the microscope to exhibit a countless number of tiny through channels.
link to macmillandictionary.com
I think we can agree though, that the sort of coffee capsules that George Clooney advertises are not constructed of water-permeable material. Isn’t that the point here: the patent application is in the field of soft flat pillow pads (with no suggestion that it might be applicable to metal capsules) whereas the accused embodiment is a Clooney-esque capsule of aluminium?
Suppose the inventor’s contribution to the art (dosage form of 2 to 10 g of tea, in particles 0.4 to 0.75 mm size range) is new and inventive. That would explain the drive against infringers, and would reveal how shoddy the drafting of the patent application was, back in 1997.
David,
I also read the patent specification. I’m also fairly familiar with this this sort of beverage extraction/formation system.
I would not read the portion you selected as relating to the “sealed body.” Instead, it relates to those “layers” which would be internal to the “sealed body” for separating additional components beyond the tea. And the patent specification does define what it means by the “water-permeable material” and the examples illustrated would not, in my opinion, include external perforation to form holes as occurs with a Keurig machine: “filter paper, permeable plastic, tight weave metal mesh, nylon and linen.” So how the district court and the Federal Circuit construed these claims with respect to “water-permeable material” as not including such external perforation to form holes is correct in my view, even if you consider DOE.
EG: the patent specification does define what it means by the “water-permeable material” and the examples illustrated [are] “filter paper, permeable plastic, tight weave metal mesh, nylon and linen.”
The counter-argument (which was surely made by the patentee) is that this is not a limiting definition but a list of examples. The full passage from the specification:
The water-permeable material suitable for construction of the sealed body can be any water-permeable material that is suitable for use with a food product, such as filter paper, permeable plastic, tight weave metal mesh, nylon and linen. The water-permeable material can be flexible or rigid. An example of a flexible material is filter paper. An example of a rigid material is tight weave metal mesh. In a preferred embodiment, a tea extraction container is formed from filter paper.
Could a person skilled in the art of tea making reasonably construe this “sealed body constructed of water-impermeable material” to cover “sealed bodies” made out of water-impermeable steel with a big hole punched through one side? I don’t think so and you and I and apparently most judges agree.
Yep, I agree with you – I made the same discovery upon re-reading that portion of the specification (see 5.2.3 above).
David, I would give more significance to the ordinary meaning of “water-permeable”. Permeate: “to diffuse through or penetrate something
… to spread or diffuse through … to pass through the pores or interstices of “. Do you think that a solid body with two holes is “water-permeable”? K-Cup’s pods have no diffusion, no spreading, no pores, no interstices.
Why should a Plaintiff not assert infringement by equivalent, at the outset?
Could it be:
1. To do so is to cast doubt on the correctness of the literal infringement assertion
2. Too expensive
3. The DoE was seen as moribund, so not worth raising
4. Some other reason.
But anyway, if plaintiff has no initial confidence in the DoE, why should anybody else? In particular, why should the court listen to him when he does get round to raising it, belatedly?
The literal infringement argument strikes me as absurd. One wonders who was bold (or foolhardy) enough to finance the suit. Can the defendant recover any part of his attorney costs from the losing Plaintiff?
perhaps to avoid harmful implications on the invalidity side of the case
[a plaintiff may not make the doe argument at the outset] to avoid harmful implications on the invalidity side of the case
This.
In this particular case the patentee’s broad claim construction would seem to have invited consideration of the same additional prior art that a d.o.e. contention (presumably to have been made “in the alternative scenario where the defendant’s claim construction is adopted”) might have snagged.
Another question: had the patentee’s broad construction been adopted, would the infringement theory be inducement (because the defendant’s containers aren’t “water permeable” until the consumer puts them in the brewing machine which pierces them)?
[…] Federal Circuit: A hole is not “water-permeable” […]
Would not a more accurate title be: “A “sealed body” is not “water permeable” ?
Agreed. A sealed body is not water permeable just because one can poke a hole in it. In examination, however, unless you specifically excluded “able to have a hole poked in it” from the definition of ‘water permeable’ in the as-filed specification then any prior art sealed body is inherently water permeable for the very reason that it could be poked.
That would be a boring title.
Get it? “Boring.”
Interesting, given that a tea bag certainly could be made of water-impermeable threads forming a closed container with “holes” between the threads, only on a much smaller scale and with many more holes than the Keurig cup. Few would dispute such a tea bag would infringe the claim.
There must be more to the claim that was excerpted because a normal tea bag would be prior art against that “sealed body”.
There is more to the claim. But to the extent that “sealed water-permeable containers” include metal, glass or ceramic containers with openings, the prior art would seem to present some serious problems.
This lawsuit was a hail mary pass by the patentee, to put it kindly.
Since you appear to not want to have an actual conversation on the Halo thread (my post at 4.1.1.1 there), perhaps here you will share some examples of “often” used legal theories that appear to deserve sanctions.
Being ominous, yet nebulous, does tend to paint your views as FUD. You might want to be aware of that.
Comments are closed.