Guest Post by Jordan Duenckel. Jordan is a third-year law student at the University of Missouri and a registered patent agent. He has an extensive background in chemistry and food science.
A recent Federal Circuit opinion, K-Fee v. Nespresso, 2022-2042, — F.4th — (Fed. Cir. Dec. 26, 2023), arises from an infringement suit filed by K-fee System GmbH against Nespresso USA, Inc. in the Central District of California and revives a coffee controversy. K-fee owns three related patents (the ‘176, ‘177, and ‘531 patents) concerning coffee capsules that display information via a “barcode” which is read by the coffee machine to control the beverage production process. The key dispute is over the meaning of “barcode” and whether there was any prosecution disclaimer.
The technology underlying the dispute is individual coffee pods that have a barcode located on the outer rim of the pod that the coffee machine can read to self-adjust temperature, water amount, and other characteristics to brew different types of coffee all without user input creating a “one touch” gourmet coffee maker. Depending on the pod, our Nespresso machine can make expresso, a double expresso for the wife, or just a cup of black coffee for me.
K-fee owns U.S. Patent No. 10,858,176 and claim one reads in part:
1. A method of making a coffee beverage comprising:
providing an apparatus including a barcode reader;
inserting a first portion capsule into the apparatus, the first portion capsule including . . . an opposing bottom side with a first barcode located on the bottom side, . . . ;
reading the first barcode with the barcode reader;
controlling a production process of a first coffee beverage based upon the reading of the first barcode;
The initial issue is the plain and ordinary definition of a barcode as both parties agree that the plain and ordinary definition is appropriate but disagree about what that meaning is. The district court issued a claim construction order construing “barcode,” relying on statements K-fee made distinguishing certain prior art (Jarisch) during prosecution of a related European patent before the European Patent Office (EPO). Based on K-fee’s statements that Jarisch discloses a “bit code” rather than a barcode, the district court construed barcode to exclude the type of bit codes in Jarisch. The district court granted summary judgment of non-infringement to Nespresso, finding that its accused coffee capsules use a code identical to Jarisch’s bit codes.
The Federal Circuit reviewed appeal of the claim construction de novo because the claim construction relied only on intrinsic evidence. The claims and specification did not define “barcode,” so the court looked to the prosecution history, specifically K-fee’s statements distinguishing the Jarisch reference before the European Patent Office. Specifically examined were what the statements would indicate to a person having ordinary skill in the art about the meaning of “barcode.” K-fee presented evidence consisting of quotes from technical publications describing “barcode” as a code with bars of varying widths. K-fee also explicitly stated “the [skilled artisan] at all times defines the term ‘barcode’ as a line code constructed of bars having variable widths.” Additional confirmation is in K-fee’s statement that standard UPC retail barcodes fall within the scope of its claims. Since K-fee did not describe anything about how retail barcodes encode data, this further indicates K-fee was focused only on the visual appearance of varying width bars when referring to “barcodes.”
Judge Taranto concludes a skilled artisan would not understand K-fee’s statements as excluding all bit codes from the scope of “barcode.” He specifically points to K-fee explicitly stating that retail barcodes like UPC codes are barcodes, even though they contain binary code elements. Citing Phillips v. AWH Corp.,415 F.3d 1303, 1312-17 (Fed. Cir. 2005), Judge Taranto found that the ordinary meaning of “barcode” to a relevant artisan focuses on visual appearance – i.e. a linear sequence of visually non-uniform width bars and concluded that the district court erred in narrowing the ordinary meaning of “barcode” based on K-fee’s statements to the EPO.
I am sympathetic to Nespresso’s concern that the focus on visual appearance as to ordinary meaning misses some of the nuance about what the barcodes actually represent and that a relevant artisan would consider their functional purpose. As construed by Judge Taranto, “varying-width visual appearance of the bars” is an extraordinarily broad claim construction that seems to expand the claim scope significantly compared to the more narrow district court construction.
The corollary issue is whether K-fee’s statements to the EPO are disclaimer of claim scope. Nespresso alleges that K-fee’s statements to the EPO constitute surrender of claim scope that would include their Vertuo coffee pod product. The court notes disclaimer requires “clear and unmistakable” statements, unequivocally disavowing claim scope. Looking at K-fee’s EPO submissions, statements about bit codes being excluded from barcodes were ambiguous rather than clear. For example, K-fee said a barcode “can be, but is not necessarily, a bit code.” This directly contradicts disclaimer of all bit codes.
Judge Taranto concludes that the prosecution history as a whole does not show K-fee clearly disclaimed any portion of the ordinary meaning of “barcode.” The only thing K-fee clearly distinguished was the Jarisch reference itself, which does not expressly disclose varying width bars. Multiple instances indicate some possible indicia that K-fee disclaimed some scope however, it was not “clear and unmistakeable” as required to find disclaimer. Therefore, reversing the district court’s construction of “barcode” also necessitated reversing the summary judgment of non-infringement that was based entirely on the erroneous claim construction.
I open a pop tart. I read instructions on the package how long i need to toast it for. I follow the instructions.
This is not a patentable process. Having a computer read and follow the instructions instead of me is also not patentable subject matter. This should have been blasted under 101.
It is also obvious and should be blasted under 103.
Your attempted equating human action to non-human action is not in accord with patent law, as regards to patent eligibility.
Maybe learn about the topic and have an informed opinion…
Wait, what?!
You mean bar codes aren’t those secret passwords that get select folks into very exclusive bars?
Or those codes (spoken only of course) between certain anti-patent members of the CAFC to bar patents from being enforced . . . or obtained?
The password is:
Swordfish
And what is all of this hoopla about an overpriced Mr. Coffee?
Happy Public Domain Day! Excellent article out of Duke University about the works that have entered the PD and the ways in which you can now use/abuse those works (and when to be careful about it). 🙂
link to web.law.duke.edu
Great for the Commons, eh Comrade?
(How is that cognitive dissonance of yours against personal property coming along?)
It’s great for everybody, you miserable twerp.
Obtuse. Is it deliberate?
In this primitive system, you still have to select the pod with the correct code. In my improved system, the coffee maker has a sensor camera that identifies not just the user but the user’s particular coffee desire. The user need only stand before the sensor camera and point to one of a variety of codes tattooed onto the user’s face.
I just remembered another reason why this barcode trick is old and obvious and manufacturers are compelled to employ it: Without the right barcode, competitive pods cannot work with K-fee coffee maker. It’s a good idea for some disposables (you don’t want competitive catheters to be used in a box that is not proven to work with them, and you don’t want doctors re-using catheters on different patients). For pods, maybe it’s anti-competitive if there is no good reason to do it, so you make up a story about how different pods need different water temperatures or brew times. Still, a compelling reason to do it with whatever parameter you can dream up.
For an even better known anticompetitive use of barcodes or other interlock codes for supply containers for machine insertions [coffee, ink or whatever] have the machine programmed to completely stop working when a competitive supply container is inserted.
Are we jumping the shark in attempting to equate bar codes and the more general control codes (interlock being one function)?
Is this several rungs up the Ladder of Abstraction?
We jumped that shark at 2.1 above. Every known mechanism for identifying a disposable to a box, whether to lock it out or select parameters for operation, is an obvious choice.
Even better than “completely stop working”: machine sprays a high pressure jet of scalding water at the user’s crotch. Sounds nasty except the machine also calls 911 to the house, feeds the dog while the user is recuperating in the hospital, and places an ad for the user in a special burn victim section of Match dot com.
What I find amazing about cases like this is how much time and money has been spend on litigating and appealing a non-infringement argument over a claim word like “barcode,” when claim 1 seems to be begging for IPR invalidity? E.g., what should come to mind immediately to any patent attorney upon reading: “Inserting [an object] into the apparatus, the [object] including .. a barcode .., reading the barcode with the barcode reader; controlling a production process of a [whatever] based upon the reading of the barcode?” Yes, the notorious Lemelson “computer vision” patents, kept pending and amended for a quarter century to cover this widely used concept used for numerous different products and manufactures. It made Lemelson’s fortune as well as a small fortune for many defending patent attorneys. [At least he left much of that money to his foundation.] Lemelson is largely responsible for the change in U.S. patent terms starting from filing dates rather than issue dates.
Agreed. There are numerous systems that use printed indicia, digital data, or analog values to detect disposable components that might require different operation of the base unit. It seems obvious to employ any such a regimen in any system, though a barcode might be the most obvious.
“Seems obvious” is an understatement. Maybe the understatement of the year! The earliest contender in 2024.
But wait! It’s a known fact that computer-readable codes don’t work in the coffee preparation context. This discovery might mark the beginning of the Sixth Kondrachian Wave.
It’s Kondratiev.
But you be you and try to make fun of something that you don’t understand.
For us that have studied innovation, it’s rather amusing to see you play the jester (again, still, both)
You same unaware of the work of the economist Bruce Arthur Kondrach.
Oh, sure, tell me more (of that [same])
just say thank you sir may i have another
I would, if it were fitting, my pal Shifty.
Alas, it is not so.
But Malcolm is free to expound on his errant attempt at being a “smart arse.”
If I understand it right, the device accused of infringement uses a code “identical” with that of the prior art (Jarisch). If I understand the final sentence of the piece, a finding that Nespresso infringes a valid claim of the asserted patent is still some way off. How far off, I wonder.
In other jurisdictions, a popular defence to an accusation of infringement is that one’s accused embodiment is not patentably distinct from the prior art (so the patent owner cannot have their cake and eat it too: the claim is either invalid or not infringed; one or the other, depending on how one construes the claim). In England, that would be the “Gillette” defence in Germany the “Formstein” defence. How does that line of argument play out, in the USA? How much credibility with the courts does K-Fee still enjoy, in this litigation, I wonder?
The case is also interesting for one who routinely prosecutes applications and oppositions at the EPO, in the area of how to argue the patentability of the subject matter claimed. Nothing “clear and unmisatakable” that would be then. No surrender!
Cannot find the case readily, but the quote is “the claims being invalid, there is nothing to infringe.” But some ninnies in Commil v. Cisco picked a nit with that longstanding maxim, and held that invalidity is no defense to patent infringement, but instead is a defense to liability. I never understood that.
Never understood it? Perhaps we need to define our terms? What is the operative and definitive definition of “infringement”? Is it 1) to fall within the ambit of a particular asserted claim, or 2) to fall within the ambit of a not-invalid asserted claim? The answer is decisive, isn’t it?
What does the patent statute say on this topic?
But please forgive me if at 1.1 you were being facetious and I was just not smart enough to spot it.
What I do not understand is that, after a long period of patent law operating under the maxim that invalid claims cannot be infringed (“The claim being invalid there is nothing to be infringed.”)(Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1535 (Fed. Cir. 1987, Richdell, etc.), why Kennedy thought it necessary to re-jigger the issue by stating that invalid claims can be infringed but cannot be enforced. What is the difference, and how does it help in any analysis? Maybe there is some rationale beyond Kennedy being a pedant, but I cannot see it.
Yes, and an important difference between invalidity and non-infringement decisions is that the former normally applies to that infringer, whereas an invalidity decision is going to make it very hard to sue any other infringers as well.
It’s a good defense in the US if the “identical” reference is really identical (e.g., you can show prior sales). It’s not as good if you only have a 103 combo and/or if there are other distinctions between your product and the 102 reference.
Given how many different patent offices allowed something, I’m guessing the art wasn’t all that close here. Plus, patentee probabably has a strong ‘objective’ case due to many licensees and widespread media aclaim.
Your mention of other Patent Offices prompted me to check out the EPO family members. I see many applications, four of which have so far made it through to issue. I see that there is litigation in Germany, where the initial patent applications were filed in 2010 by the two German inventors. All very interesting.
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