K-Fee System GmbH v. Nespresso USA, Inc.

Docket No. 2022-2042 (https://cafc.uscourts.gov/opinions-orders/22-2042.OPINION.12-26-2023_2244064.pdf)

TARANTO, CLEVENGER, STOLL

December 26, 2023

Brief Summary:  DC claim construction and prosecution history estoppel based on European opposition proceeding reversed and remanded (e.g., “too confining”).

Summary:  K-fee appealed DC grant of summary judgment (SJ) that Nespresso’s coffee machine “products did not meet the ‘barcode’ claim limitations” of three patents “under the court’s construction and thus it did not infringe any asserted claims.”  Representative claim 1 of K-fee’s US 10,858,176 includes providing a method of making a coffee beverage using capsule including two barcodes.  The DC “noted that ‘the parties agree that plain and ordinary meaning applies, but dispute what that meaning is’”.  It “characterized the core of the dispute as ‘whether statements made by K-fee System GmbH . . . before the EPO [European Patent Office] concerning the meaning of ‘barcode’ should influence the plain and ordinary meaning of that limitation in these proceedings.”  The statements were made “in a motion asking the EPO to deny an opposition filed by Nespresso’s foreign affiliate, Nestec S.A., that challenged the validity of K-fee’s related European patent”, “seeking to distinguish a particular piece of prior art” (i.e., “K-fee had ‘argued strenuously’ before the EPO for a particular ‘plain and ordinary meaning,” which excluded ‘bit codes’—codes made up of two binary symbols”).  The DC “construed ‘barcode’ to have its plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps), the scope of which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in Jarisch/D1)”, without “resort[ing] to extrinsic evidence to construe th[e] term” .  The FC panel reviewed the claim construction de novo since the DC relied only on intrinsic evidence (Intel, FC 2021), explaining that the “ordinary meaning in the context of the claim and the whole patent document” controls (“the specification particularly”) and that “even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition’” (Ormco, FC 2014, citing Phillips, FC 2005 and Thorner, FC 2012; Personalized Media, FC 2020).  K-fee argued “that its statements to the EPO did not meet the standard for disclaimer” (i.e., that from its statements and declaration “a relevant artisan would still conclude that no bit code could be a barcode”).  The FC panel first “consider[ed] the ordinary meaning of “barcode” in the context of the patent and prosecution history and then turn[ed] to the question of whether K-fee surrendered claim scope by clear disclaimer or redefinition.”   The FC panel concluded the DC erred in its construction of barcode (“too confining”, “K-fee’s EPO submission is consistent with K-fee’s bottom-line purpose”) and “K-fee did not act with the clarity required either to prescribe a new meaning for “barcode” or to disclaim any portion of the apparent meaning” (“K-fee’s representations to the EPO were far from “clear[]”; CommScope, FC 2021; SmithKline, FC 2006).  The DC decision was therefore reversed and remanded.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.