Keurig, Incorporated v. JBR, Inc.
Judge F. Dennis Saylor, IV: MEMORANDUM AND ORDER entered. JBR's motions ( 25 + 31 ) for summary judgment as to the infringement of U.S. Patent No. D502, 362; U.S. Patent No. 7,165,488; and U.S. Patent No. 7,347,138 are GRANTED.(Cicolini, Pietro)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
Civil Action No.
JBR, INC. d/b/a ROGERS FAMILY
MEMORANDUM AND ORDER ON
This is a patent dispute involving inventions that allow a consumer to brew a single cup
of coffee.1 Plaintiff Keurig, Inc., manufactures brewers and individual cartridges containing
ground coffee. Keurig seeks a judgment that cartridges manufactured and sold by defendant
JBR, Inc., infringe upon its patents. JBR has asserted, among other things, non-infringement and
invalidity of Keurig's patents.
Specifically, Keurig claims thatJBR's cartridges infringe upon the design patent Keurig
holds for its beverage cartridges, U.S. Patent No. D502, 362 (the "'362 patent"). Keurig also
claims that the manufacture and sale of JBR's cartridges indirectly infringes upon apparatus and
method claims in the patents Keurig holds for its brewers, U.S. PatentNo. 7,347,138 (the "'138
patent") and U.S. Patent No. 7,165,488 (the "'488 patent"). JBR has moved for summary
The cartridges forthebrewer at issue can also be used for tea, hotchocolate, or other hotbeverages. For
the sake of simplicity, the Court will generally use the term "coffee."
judgment on all of those claims onthebasis of non-infringement. Forthereasons set forth
below, the Court will grant JBR's motion for summaryjudgment as to infringement of the '362,
'138, and'488 patents.
Keurig filed the application that ultimately produced the '488 patent on December 12,
2003. The '488 patent was issued on January 23, 2007. Keurig filed the application for the ' 138
patent on August 24, 2004. The '138 patent was issued on March 25, 2008. Keurig filed the
application for the '362 patent on December 3,2003. The '362 patent was issued on March 1,
The '362 patent is a design patent directed to a "disposable beverage filter cartridge." It
contains no descriptive textual claims; the patent claims encompass seven drawings of the design
from different perspectives. Those drawings are as follows:
Fig. 1 - Claims of the '362 patent
'138 and '488 Patents
The '138 and '488 patents are directed to an apparatus and method for brewing a single
cup of coffee using a removable "beverage cartridge." The specific claims of the '138 patent at
issue are independent claim 1 and dependent claim 18. The claims of the '488 patent at issue are
independent claim 22 and dependent claim 29.
Claims 1 and 18 of the '138 patent collectively read:
An apparatus for forming a beverage, comprising: a housing adapted to support
components of a beverage forming device; a receptacle movable relative to the
housing between a vertical position and an inclined position in which the
receptacle is accessible to insert or remove a beverage cartridge; a lid that covers
at least part of the receptacle when the receptacle is in the vertical position; a
handle that is movable between open and closed positions to cause the receptacle
to move between the vertical and inclined positions; and at least one resilient
element arranged to resiliently hold the handle in the closed position, wherein the
at least one resilient element remains deflected when the handle is in the closed
The apparatus of claim 1, further comprising a beverage cartridge that includes a
beverage medium and a filter element.
Claims 22 and 29 of the '488 patent collectively read as follows:
A method for forming a beverage, comprising: providing a beverage forming
device having a housing with a receptacle accessible to a user, the receptacle
having an opening to receive a beverage cartridge, and the receptacle opening
having a center axis extending from a center of the opening; moving the
receptacle from a vertical position, in which the center axis extends vertically and
intersects a lid in a closed position, to a forwardly inclined position in which the
opening of the receptacle to receive a cartridge faces away from the lid, and the
center axis does not intersect the lid in an open position; moving the lid to the
open position; providing a beverage cartridge in the receptacle while the
receptacle is in the forwardly inclined position; moving the receptacle to the
vertical position; to moving the lid to the closed position in which the lid
cooperates with the receptacle to at least partially enclose the beverage cartridge;
and providing a liquid into the beverage cartridge to produce a beverage.
The method of claim 22, further comprising piercing the beverage cartridge with
an inlet probe when the lid is moved to the closed position.
Keurig manufactures and licenses commercially available brewers and beverage
cartridges (branded as "K-Cups") that embody the claimed apparatus and allow users to
accomplish the claimed methods. JBR manufactures beverage cartridges (branded as
"OneCups") that can be used with Keurig brewers to brew a single cup of coffee. Whether using
a Keurig or JBR cartridge, a user operates a Keurig brewer in substantially the same manner.
Once the machine has been turned on and filled with water, the user places a coffee cup in
position under the brewing chamber where the coffee will be dispensed. The user then moves a
"handle" to put the machine in an "open position;" this causes a receptacle in the brewing
chamber to move into an "inclined position." The user then inserts a cartridge filled with coffee
grounds (either Keurig or JBR) into that receptacle. The user then lowers the handle, which puts
the machine in the "closed position" (and causes the receptacle to move back to the "vertical
position"). The moving of the handle into the "closed position" causes the machine to "pierce"
the cartridge, permitting hot water to pass into the cartridge. The user presses the brewing
button. In a few moments the hot coffee is dispensed into the awaiting cup.
On November 2, 2011, Keurig filed suit under 35 U.S.C. §100 et seq. against JBR for
infringement of the '362, '138, and '488 patents. Specifically, Keurig contends that JBR has
infringed on the entirety of the '382 patent, claims 1 and 18 of the '138 patent, and claims 22 and
29 of the '488 patent.
The Court conducted a Markman hearing on the construction of the relevant terms used in
the '138 and '488 patents on January 29, 2013, and issued a memorandum and order construing
those terms on March 22,2013. The Court declined to construe the claims of the '362 patent
with descriptive language, instead relying on the visual depictions in the patent itself.2
The Court will now take up JBR's pending motions for summary judgment on the issue
of infringement of the entirety of the '362 patent; and the specific claims of the '138 and '488
Standard of Review
Summary judgment is appropriate when the pleadings, the discovery and disclosure
materials on file, and any affidavits show that "there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "Essentially,
Rule 56 mandates the entry of summary judgment 'against a party who fails to make a showing
sufficient to establish the existence of an element essential to that party's case, and on which that
party will bear the burden of proof at trial.'" Coll v. PB Diagnostic Sys., 50 F.3d 1115,1121 (1st
Cir. 1995) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)). In making that
determination, the Court views "the record in the light most favorable to the nonmovant, drawing
reasonable inferences in his favor." Noonan v. Staples, Inc., 556 F.3d 20, 25 (1st Cir. 2009).
As the Federal Circuit has made clear with respect to claim construction in the design patent context, "the
court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as
necessary or helpful. In addition, in deciding whether to attempt a verbal description of the claimed design, the
court should recognizethe risks entailed in such a description, such as the risk of placing undue emphasis on
particular features of the design and the risk that a finder of fact will focus on each individual described feature in the
verbal description rather than on the design as a whole." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,
679-680 (Fed. Cir. 2008).
Keurig contends that JBR's beverage cartridges, which it manufactures and sells for use
in Keurig brewers, directly infringe upon the claims of '362 design patent in violation of35
U.S.C. § 271(a). Section 271(a) provides that "[e]xcept as otherwise provided in this title,
whoever without authority makes, uses, offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented invention during the term of the
patent therefor, infringes the patent." Infringement under this section is known as "direct
infringement" because the alleged infringer is the entity that practiced the patented invention.
Here, Keurig alleges that by manufacturing and offering for sale beverage cartridges that are
covered by the '362 design patent, JBR has directly infringed that patent.3
Ordinary Observer Test
It is well-established, and neither party disputes, that the "ordinary observer" test applies
to claims of infringement of a design patent. That test, as articulated by the Supreme Court in
Gorham v. White, holds that "if, in the eye of an ordinary observer, giving such attention as a
purchaser usually gives, two designs are substantially the same, if the resemblance is such as to
deceive such an observer, inducing him to purchase one supposing it to be the other, the first one
patented is infringed by the other." 81 U.S. 511, 528 (1872). For the purposes of applying that
test, an "ordinary observer" is "not any observer, but one who, with less than the trained faculties
The briefs of both parties devoted substantialattention to the Delaware district court's summary judgment
ruling in favor of another alleged infringer in a similar case brought by Keurig Keurig, Inc. v. Sturm Foods, Inc.,
2012 U.S. Dist. LEXIS 130762(D. Del. Sept. 13,2012). Notably,that case did not involve a claim of infringement
of the '362 design patentfor beverage cartridges. Indeed, a footnote in the district court's opinion noted, "[k]eep in
mind that it is the brewer and the use of the brewerthat are claimed,not the cartridge itself." Id. at 16-17n. 2. Here,
the brewer, the use of the brewer, andthe design of the beverage cartridge are claimed.
ofthe expert, is 'a purchaser of things of similar design,' or 'one interested in the subject.'"
Applied Arts Corp. v. Grand Rapids Metalcraft Corp, 67 F.2d 428, 430 (6th Cir. 1933)
(interpreting Gorham, 81 U.S. 511).4
The Federal Circuit has held that the "ordinary observer" test is "not limited to those
features visible at the point of sale, but instead must encompass all ornamental features visible at
any time during normal use of the product." Contessa Food Prods, v. Conagra, 282 F.3d 1370,
1381 (Fed. Cir. 2002). The Federal Circuit recently defined "normal use" in this context as
including the period "extending from the completion of manufacture or assembly until the
ultimate destruction, loss, or disappearance of the article." Int'lSeaway TradingCorp. v.
Walgreens Corp., 589 F.3d 1233,1241 (Fed. Cir. 2009).
Despite its potentially confusing title—which refers to the design as one for a "disposable
beverage filter cartridge"—the '362 patent does not describe an internal component of the
cartridge commonly licensed and sold by Keurig under the brand name "K-Cup." Instead, it
describes a cartridge of a separate and distinct type that would in fact be visible to the "ordinary
observer" during normal use.
It is of no consequence that neither Keurig, nor any license holder, currently manufactures
or sells a product that embodies the design claimed in the '362 patent. The Federal Circuit has
counseled against using commercial embodiments of a design patent, rather than the patent
4On this subject, the Gorham court remarked that "[e]xperts, therefore, are not the persons to be deceived.
Much less than that which would be substantial identity in their eyes would be undistinguishable in the eyes of men
generally, of observersof ordinary acuteness, bringingto the examination of the article upon which the design has
been placed that degree of observation which men of ordinary intelligence give. It is persons of the latter class who
are the principalpurchasers of the articles to which designshave given novel appearances, and if they are misled,
and induced to purchase what is not the article they supposed it to be ... the patentees are injured, and that
advantage of a market which the patent was granted to secure is destroyed." 81 U.S. at 528.
drawings standing alone, for comparison to the allegedly infringing product when performing an
"ordinary observer" analysis. See, e.g., Sun Hill Indus, v. Easter Unlimited, 48 F.3d 1193,1196
(Fed. Cir. 1995) ("The test for infringement is not whether the accused product is substantially
similar to the patentee's commercial embodiment of the claimed design. Such a test risks relying
on unclaimed and therefore irrelevant features as grounds for similarity or difference."); Hutzler
Mfg. Co. v. Bradshaw Int'l, Inc., 2012 U.S. Dist. LEXIS 103864 (S.D.N.Y. July 24,2012) ("A
long line of cases counsels that, in performing a side-by-side comparison, courts generally should
compare the design set forth in the patent—that is, the drawings—with the accused product,
rather than comparing the embodiment of the patented design and the accused product.")
(collecting cases); see also L.A. Gear v. Thorn McAn Shoe Co., 988 F.2d 1117,1125 (Fed. Cir.
1993) ("Design patent infringement relates solely to the patented design, and does not require
proof of unfair competition in the marketplace."). Accordingly, the proper application of the
"ordinary observer" test here requires the comparison of the actual JBR cartridge with the
drawings of the '362 patent.
The Federal Circuit recently explained in greater detail how the "ordinary observer" test
functions when applied in the pre-trial motion context. In Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008), the court affirmed the district court's granting of summary
judgment on non-infringement grounds, remarking that
[i]n some instances, the claimed design and the accused design will be sufficiently
distinct that it will be clear without more that the patentee has not met its burden of
proving the two designs would appear 'substantially the same' to the ordinary observer,
as required by Gorham. In other instances, when the claimed and accused designs are not
plainly dissimilar, resolution of the question whether the ordinary observer would
consider the two designs to be substantially the same will benefit from a comparison of
the claimed and accused designs with the prior art, as in many of the cases discussed
above and in the case at bar.
Egyptian Goddess, 543 F.3d at 678. Courts have interpreted this language as establishing "two
levels to the infringement analysis: a level-one or 'threshold' analysis to determine if
comparison to the prior art is even necessary, and a second level analysis that accounts for prior
art in less obvious cases." WingShing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d
357, 362 (S.D.N. Y. 2009); see also Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F.
Supp. 2d 1038, 1052 (W.D. Wash. 2010) (employing the same approach). Although at both
levels the inquiry must focus on the similarity in "overall appearance" of the allegedly infringing
product and the patented design, the Federal Circuit has recognized that "in determining whether
apparently minor differences between specific features would be recognized as distinguishing the
designs, it is often helpful to refer to any prior art with which the ordinary observer would
reasonably be familiar." Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524, 527 (Fed. Cir.
Accordingly, the Court here will first determine whether the designs of the JBR cartridge
and the '362 patent are "plainly dissimilar" before engaging in any comparison to prior art.
In determining whether, to the ordinary observer, an allegedly infringing product is
"plainly dissimilar" from a patented design, "[t]he proper comparison requires a side-by-side
view of the drawings of the  patent design and the accused product." Crocs, Inc. v. ITC, 598
F.3d 1294,1304 (Fed. Cir. 2010). On summary judgment, the question for the Court is whether
reasonable jurors viewing such a comparison could differ as to conclusion that the designs are
"plainly dissimilar." This inquiry is highly fact-dependent, and thus not particularly well-suited
to decision on summary judgment. Nonetheless, there exist some helpful examples of designs
found "plainly dissimilar" as a matter of law.
In Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. 111. 2010), the
district court compared the following product and patented design for a calculator:
Fig. 2 - Staples
Fig. 3 - design
Id. at 1003-1005. The court found that "the two designs, taken as a whole, create overall visual
impressions that would appear plainly dissimilar to the ordinary observer." Id. at 1011. In the
court's view, "the scalloped edges in the patented design when compared with the smooth edges
of the accused design, and the hour-glass shape of the accused design when compared with the
block-rectangle shape of the patented design [were] important aspects that dominate[d] the
overall visual appearance of the respective designs." Id.
In Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D.
Wash. 2010), another district court compared an allegedly infringing folding knife to a number of
patented designs. The court found that the allegedly infringing product was plainly dissimilar
from at least four of the patented designs, and therefore granted summary judgment as to
infringement of those patents without any comparison to the prior art. See id. at 1052. In making
that determination, the court focused on the absence on the allegedly infringing knife of "any
element resembling a segmented u-shaped clip," as well as differences in the scalloping of the
knife handle and the shape of the blade holder. Id.
In contrast to those cases, in Crocs, 598 F.3d 1294, the Federal Circuit reversed an
International Trade Commission decision that the allegedly infringing shoes did not infringe on
Croc's patented design. To reach that conclusion, the Federal Circuit utilized side-by-by-side
comparisons, such as the following:
Fig. 4 - Patented design (left) and infringing product
Id. at 1306. According to the court, "[i]n one comparison after another, the shoes appear[ed]
nearly identical." Id. The court further remarked that "[i]f the claimed design and the accused
designs were arrayed in matching colors and mixed up randomly, [it was] not confident that an
ordinary observer could properly restore them to their original order without very careful and
prolonged effort." Id.
A similar side-by-side comparison of the allegedly infringing JBR cartridge and the
design of the '362 patent is as follows:
Fig. 5 - '362 patent drawings (left) and JBR
As this comparison demonstrates, the similarities between the design of the JBR cartridge
and the design of the '362 patent do not rise to the level of the "nearly identical" designs in
Crocs. 598 F.3d at 1306. However, that does not necessarily decide the issue of whether the
designs at issue would be "plainly dissimilar" to the ordinary observer as a matter of law. Such a
determination requires a more careful analysis of the side-by-side comparison and the similarities
(and differences) exposed thereby.
JBR urges the Court to ignore many of the similarities between the designs (including the
circular shape of the lid, the overall tapered shape of the filter, and the depending skirt) because,
it contends, these features are all functional. It is certainly true that "a design patent, unlike a
utility patent, limits protection to the ornamental design of the article." Richardson v. Stanley
Works, Inc., 597 F.3d 1288,1293 (Fed. Cir. 2010) (affirming a district court's decision to "factor
out" the functional aspects of the patented design in claim construction before application of the
ordinary observer test).
Ordinarily, the task of "distinguishing between those features of the claimed design that
are ornamental and those that are purely functional" is one that is undertaken in claim
construction. Egyptian Goddess, 543 F.3d at 680. Here, however, neither party argued the issue
in its claim construction briefing or in oral argument at the Markman hearing. The Court thus
did not have occasion to construe the claims of the '362 patent using descriptive language,
instead relying on the visual depictions in the patent itself. Now, the parties would have the
Court distinguish between the functional and ornamental elements of the design on summary
judgment. The Court will rely on the numerous affidavits filed in support of summary judgment
briefing to decide which elements of the '362 design, if any, are functional. See
Colgate-Palmolive Co. v. Ranir, L.L.C., WL 2225888, 2 (D. Del. 2007) (concluding that claim
construction of design patents involves "considerationsthat this court views as inherently factual
and not likely to be evident from the intrinsic record, but rather, the type of factors on which trial
courts routinely hear experts opine.").
InAmini Innovation Corp. v. Anthony Cal, Inc., 439 F.3d 1365 (Fed. Cir. 2006), the
Federal Circuit defined functionality in the context of design patent interpretation. The court
held that "[a]n aspect is functional 'if it is essential to the use or purpose of the article or if it
affects the cost or quality of the article.'" Id. at 1371 (quoting Inwood Labs., Inc. v. Ives Labs.,
Inc., 456 U.S. 844, 850 n. 10 (1982)). Although the Court may consider a wide range of factors
in making that determination, the parties focus primarily on two—the existence of a concomitant
utility patent application and the existence of alternative designs. See Berry SterlingCorp. v.
Pescor Plastics, Inc., 122 F.3d 1452,1455-56 (Fed. Cir. 1997).
Keurig's expert offers the opinion that the three main features of the design (the circular
shape of the lid, the overall tapered shape of the filter, and the depending skirt) are all
ornamental, rather than functional, because obvious alternative design choices existed. (See
As to the shape of the lid, Keurig's expert opines that, instead of a circular design, one of
any number of polygonal shapes (such as a hexagon, octagon, or decagon) could have been
chosen without compromising the fit of the cartridge with the circular brewer receptacle. (See id.
at K| 26-27). JBR responds that because the brewer receptacle is circular, the choice of a
circular lid for a beverage cartridge meant to fit into it was preferable and obvious. JBR points to
Keurig's own utility patent filing, which discloses the preferred embodiment of a "Disposable
Beverage Filter Package" as having a "circular" top opening. (See U.S. App. No. 11/037,501 at |
15). However, that utility patent application also discloses "various changes and modifications
[that] may be made to the embodiment herein chosen for purposes of disclosure without
departing from the scope of the claims appended hereto ... includpng] the use of differently
shaped filter pouches and lids." (Id. at *\ 25). JBR has offered no evidence as to how changes to
the lid shape, provided that they still permit the cartridge to fit in the brewer receptacle, would
compromise the quality of the cartridge's performance. Accordingly, the Court will treat the
circular shape of the lid as an ornamental aspect of the patented design that may be considered in
the comparison. AminiInnovation Corp., 439 F.3d at 1371 (internal quotation omitted).
As to the tapered shape of the filter, Keurig's expert opines that there are at least two
alternative shapes that could have been used for the filter design. (See id. at ffl[ 35, 37). In his
opinion, the filter could have been either cylindrical or symmetrically conical. (Id.).5 JBR
responds that it was known in the industry that tapered filters more effectively brewed coffee,
citing the website of a large corporation in the industry that manufactures coffee filters (Melita)
and Keurig's own utility patent filings. (See Johnson Reply Deck at Ex. 1; Johnson Deck at Ex.
6). The Melita document unequivocally asserts that as between the filter shapes "[c]one (round
top gradually tapering down to the bottom) and Basket (circular holder/filter with a flat bottom)
... cone shaped holders with cone shaped filters are recommended as the design ensures optimal
coffee saturation and extraction versus basket shaped holders/filters." (See Johnson Reply DecL
at Ex. 1). Admittedly, there is no evidence that the public statements of Melita are supported by
expert analysis; however, the company does manufacture both "cone" and "basket" shape filters,
suggesting that it has no incentive to prefer one over the other. On the other hand, Keurig's
expert is a mechanical engineer who, though well-qualified, appears to have no direct experience
5It isunclear tothe Court how the "symmetrically conical" alternative design issignificantly different from
JBR's design in terms of overall shape. Indeed, the images of this proposed design provided by Keurig's expert
appear very similar to JBR's design. If Keurig's position is that a symmetrically conical filter shape should be
considered plainly dissimilar from the shape of the filter in the design of the '362 patent, it is hard to imagine how
the tapered hemispherical shape of the filter in the JBR cartridge should not also be considered plainly dissimilar.
designing coffee brewing systems and offers no opinion on the relationship between the shape of
a filter and the quality of the resultant brewed coffee. Considering this record, the Court finds
that general tapered shape of the filter does "[a]ffect the quality of the [beverage cartridge]," and
therefore is a functional aspect of the patented design that cannot be considered in the
comparison. Amini Innovation Corp., 439 F.3d at 1371 (internal quotation omitted). However,
the specific shape of the tapered filer remains a relevant point of comparison.
As to the depending skirt, Keurig's expert opines in substance that it is an unnecessary
ornamental feature. (See Slocum Deck at ^ 31). In his opinion, the filter could have been
attached directly to the lid without the depending skirt providing support. (Id.). In response,
JBR contends that the depending skirt is necessary because it accommodates heat sealing.
(Rogers Deck at 15). Keurig's expert makes no mention of "heat sealing" per se, but does
opine that the cartridge would function equally well with direct attachment of the filter to the lid.
(See Slocum Deck at f 31). On this limited evidence, the Court cannot conclude that the
depending skirt is "essential to the use or purpose of the article or... [that] it affects the cost or
quality of the article," and therefore the Court will treat it as an ornamental aspect of the patented
designthat may be considered in the comparison. Amini Innovation Corp., 439 F.3d at 1371
(internal quotation omitted).
Constrained by the above findings as to the functional and ornamental aspects of the
patented design, the Court must apply the "ordinary observer" test to determine if an ordinary
purchaser of beverage cartridges would be deceived by the similarity of the JBR cartridge and the
patented design. However, in doing so, the relevant potential deception is "deception that arises
[as] a result of similarities in the overall design, not of similarities in ornamental features
considered in isolation." Amini Innovation Corp., 439 F.3d at 1371.
Viewing the JBR cartridge and the '362 patent drawings side-by-side, and discounting the
fact that the filter must generally be tapered for functional reasons, the Court notes a few
similarities and differences. First, as implicitly recognized by the above discussion, both designs
feature circular lids with depending skirts. The skirt on the JBR cartridge, however, does appear
to be somewhat longer than the skirt in the '362 patent drawings. Next, although both employ
generally tapered filters, the JBR filter is more or less hemispherical while the filter in the '362
patent drawings is shaped like a triangular prism; as a result, the JBR filter is not as long and is
generally wider. Indeed, even Keurig appears to acknowledge these differences while
maintaining that overall the designs are not "plainly dissimilar." (See Kressy Deck at ^ 28). The
When comparing the overall appearance of the JBR cartridge with the patented design,
the largest and most prominent feature of both designs is the filter. The effect of the differences
in this feature are similar to the differences between the "scalloped" and "smooth" edges and the
"hour-glass" and "block" shapes that the court found "dominate[d] the overall visual appearance
of the respective designs" in Staples. 763 F. Supp. 2d at 1011. As in that case, an ordinary
observer here would conclude that the allegedly infringing product and the patented design serve
the same function, but would not be deceived that they are one and the same. This is not a
situation where the difference in appearance is caused by only "minor differences of detail...
observable by experts, but not noticed by ordinary observers, by those who buy and use."
Gorham, 81 U.S. at 528. In contrast to Crocs, the Court is confident that "[i]f the claimed design
and the accused designs were [scrubbed of all identifying logos] and mixed up randomly ... an
ordinary observer could [in fact] properly restore them to their original order without very careful
and prolonged effort." 598 F.3d at 1306.
Accordingly, the design of the '362 patent and the accused JBR design are "sufficiently
distinct that it [is] clear without more that the patentee has not met its burden of proving the two
designs would appear 'substantially the same' to the ordinary observer." Egyptian Goddess, 543
F.3d at 678. Therefore, JBR's motion for summary judgment on the ground of non-infringement
of the'362 patent will be granted.
Comparison to the Prior Art
Because the Court concludes that the JBR cartridge and the design of the'362 patent are
plainly dissimilar, it need not undertake any comparison to the prior art. Egyptian Goddess, 543
Claims of the '138 and '488 Patents
Keurig further contends that JBR indirectly infringed upon the' 138 and '488 patents by
manufacturing and offering for sale beverage cartridges that can be combined with Keurig
brewers to form an apparatus claimed in the ' 138 patent and practice a method claimed in the
'488 patent. The relevant statutory provisions, 35 U.S.C. §§ 271(b) - (c), describe the two
general types of indirect infringement, both of which are asserted here—inducement to infringe
and contributory infringement. Pursuant to § 271(b), "whoever actively induces infringement of
a patent shall be liable as an infringer." Pursuant to § 271(c), "[w]hoever offers to sell or sells
within the United States or imports into the United States a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in practicing a
patented process, constituting a material part of the invention, knowing the same to be especially
made or especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall be liable as a
contributory infringer." Infringement under these sections is known as "indirect infringement,"
because the alleged infringers are not the entities that actually practiced the patented invention,
but rather are separate entities that facilitated the practice of the patent. See Dynacore Holdings
Corp. v. US. Philips Corp., 363 F.3d 1263,1272 (Fed. Cir. 2004) ("Indirect infringement,
whether inducement to infringe or contributory infringement, can only arise in the presence of
direct infringement."); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311,1326 (Fed.
Cir. 2004) ("There can be no inducement or contributory infringement without an underlying act
of direct infringement.").
For that reason, Keurig must prove that there is underlying direct infringement in order to
prove indirect infringement. Aro Mfg. Co. v. Convertible TopReplacement Co., 365 U.S. 336,
341 (1961) ("It is settled that if there is no direct infringement of a patent there can be no
contributory infringement."); Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301,
1316 (Fed. Cir. 2012) ("this court on numerous occasions recited the familiar and
uncontroversial proposition that one of the elements of induced infringement is proof that there
has been direct infringement").
Accordingly, Keurig must prove that the ultimate users of the Keurig brewers infringed
the claims of the '138 and '488 patents when they used JBR beverage cartridges in them.
JBR contends that Keurig cannot assert infringement of the '138 and '488 patents because
its rights under those patents have been exhausted. They further contend that the users of Keurig
brewers do not directly infringe the claims of the ' 138 and '488 patents by using JBR beverage
cartridges because the doctrine of permissible repair allows them to replace spent cartridges with
any brand of cartridge they choose.
Claims of the '138 Patent
"The longstanding doctrine of patent exhaustion provides that the initial authorized sale
of a patented item terminates all patent rights to that item." Quanta Computer, Inc. v. LG Elecs.,
Inc., 553 U.S. 617, 625 (2008). The doctrine embodies the principle that a patent holder receives
full compensation for his patent rights when he sells a patented item; it would be unfair to permit
the patent holder to control the purchaser's further use ofthat item. In other words, a patent
holder's monopoly on the manufacture, use, or sale of a patented item terminates when he sells
that item and receives compensation for it. UnitedStates v. Univis Lens Co., 316 U.S. 241, 252
(1942) ("The first vending of any article manufactured under a patent puts the article beyond the
reach of the monopoly which that patent confers."). The compensation in such an exchange
represents not only the cost of producing and distributing the item, but also the value of the
inventive aspects of that item, which are the subject of the patent. Without the doctrine of patent
exhaustion, a patent holder could effectively obtain windfall compensation from the ultimate user
of a patented item by restricting the ways in which the item could permissibly be used.
Traditionally, the doctrine of patent exhaustion has been applied to apparatus claims,
barring a patent holder from controlling the use of a claimed apparatus after its sale. Patent
exhaustion also unquestionably applies to the situation where a patent holder sells, or licenses
another to sell, a combination of products that together form the apparatus claimed in the patent.
See Sage Prods, v. Devon Indus., 45 F.3d 1575, 1579 (Fed. Cir. 1995).
The claims of the '138 patent at issue are apparatus claims. Claims 1 and 18 of the '138
patent collectively claim an apparatus for forming a beverage (in other words, a brewer) that
utilizes a beverage cartridge with a beverage medium and a filter element. Because these are
apparatus claims, the doctrine of patent exhaustion applies to them in its traditional formulation.
It is undisputed that Keurig sold, or licensed others to sell, both the brewer and filtered beverage
cartridges to consumers. Upon sale or license of these items, Keurig's rights under claims 1 and
18 of the ' 138 patent were exhausted. Therefore, Keurig cannot assert direct infringement of
those claims by consumers and, as a result, cannot assert indirect infringement of those claims by
Accordingly, JBR's motion for summary judgment on the issue of infringement of the
'138 patent will be granted.
Claims of the '488 Patent
Unlike the claims of the '138 patent at issue, the claims of the '488 patent are method
claims. Claims 22 and 29 of the '488 patent collectively claim a method for forming a beverage
that involves using a beverage-forming device (in other words, a brewer) that, among other
things, pierces a beverage cartridge with an inlet probe.
In Quanta, the Supreme Court reaffirmed that the patent exhaustion doctrine applies to
method claims as well as apparatus claims. 553 U.S. at 628-629 ("Nothing in this Court's
approach to patent exhaustion supports [the] argument that method patents cannot be exhausted.
... Our precedents do not differentiate transactions involving embodiments of patented methods
or processes from those involving patented apparatuses or materials. To the contrary, this Court
has repeatedly held that method patents were exhausted by the sale of an item that embodied the
method."). Indeed, even Keurig acknowledges that patent exhaustion is a potential bar to its
action for infringement here.
However, Keurig contends that Quanta changed the landscape of patent exhaustion with
respect to method patents. Specifically, Keurig contends that the two-part "substantial
embodiment" test derived from Quanta must always be used when analyzing the issue of whether
method claims are exhausted by the sale of a product. That test requires the alleged infringer to
show that the product sold, or licensed for sale, by the patent holder (1) included all the
"inventive aspects" of the patent claims and (2) had no "reasonable non-infringing uses."
Quanta, 553 U.S. at 638. JBR contends that the "substantial embodiment" test does not apply to
"completed products," even when there are method claims at issue. JBR contends that the initial
authorized sale of a "completed product" terminates the patent-holder's rights to patented
methods of using that product.
Whether patent exhaustion applies to method claims only if the "substantial embodiment"
test is satisfied is a recent, but not entirely novel, inquiry. In fact, the district court in Delaware
recently addressed the question in a similar case between Keurig and another producer of
beverage cartridges. The Delaware court ultimately ruled against Keurig, and held that the
"substantial embodiment" test was inapplicable because the brewers are "completed products,"
not "incomplete" items. For the reasons set forth in greater detail below, this Court agrees in
substance with the Delaware court's holding.
The Delaware court reasoned as follows:
Univis and Quanta dealt with patent exhaustion and the sale of 'incomplete' items.
Unlike those cases, [Keurig] sells a product that completely practices the patent. There is
no dispute that the brewers, unlike the lens blanks in Univis, are sold in a completed form
in accordance with the patents. There is no need to determine the extent to which the
brewers embody the patent when the brewers are sold in a completed form. For this
reason, the court agrees with defendant that the two-prong test is inapplicable; instead, the
'long-standing doctrine' that an 'initial authorized sale of a patented item terminates all
patent rights to that item' is applicable
Further... the Quanta Court has warned about the dangers of parties attempting an
'end-run' around the exhaustion doctrine via the use of method claims. The purpose of
the patent exhaustion doctrine is to ensure that a patentee surrenders its statutory
monopoly after it has received compensationfor an article sold that embodies its patent.
Were the court to find that the method claims were not exhausted because different types
of cartridges—one time use versus reusable—could be utilized in a brewer, plaintiff
would profit from brewer sales without forfeiting the right to sue those individuals who
purchased plaintiffs products. In other words, depending on the type of cartridge utilized
by a Keurig brewer owner, plaintiff could sue a purchaser of its product. That outcome is
contrary to the spirit of the doctrine and inappropriate on the given facts. As explained by
the court in Static Control Components, Inc. v. Lexmark Int'l, Inc., 615 F. Supp. 2d 575,
582 (E.D. Ky. 2009), a review of Supreme Court precedent on the law of patent
exhaustion reveals that the Court has consistently held that patent holders may not invoke
patent law to enforce restrictions on the postsale use of their patented products. After the
first authorized sale to a purchaser who buys for use in the ordinary pursuits of life, a
patent holder's patent rights have been exhausted.' Here, plaintiff is attempting to
institute a postsale restriction that prevents non-Keurig cartridges from being used in
Keurig brewers. Supreme Court precedent prevents plaintiff from undertaking such an
Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS 130762, 14-16 (D. Del. Sept. 13,
Keurig insists that the Delaware court erred and that the "substantial embodiment" test
applies to all method claims, regardless of whether the product that practices the patent is
"complete" when sold by the patent holder. Keurig argues that not only is the distinction
between "complete" and "incomplete" products not part of the caselaw, it is also unworkable as a
judicial standard. This Court disagrees as to both points.
The two foundational cases where the patent exhaustion doctrine was applied to method
claims are Univis, 316 U.S. 241, and Quanta, 553 U.S. 617. In Univis, the Supreme Court
determined that patent claims to methods for manufacturing eyeglass lenses, and to the finished
lenses themselves, were exhausted when the patent holder sold lens blanks (unpolished blocks of
glass) to a manufacturer and distributor that polished and shaped the blanks into finished lenses
by practicing the patented methods. See 316 U.S. at 250-51. The patent holder had tried to
dictate the retail price of the finished lenses in part by asserting its patent rights. See id. The
Supreme Court found that the method claims at issue were exhausted, holding that "where one
has sold an uncompleted article which, because it embodies essential features of his patented
invention, is within the protection of his patent, and has destined the article to be finished by the
purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied
in that particular article." Univis, 316 U.S. at 250-251. The Court went on to explain that
"whether the licensee sells the patented article in its completed form or sells it before completion
for the purpose of enabling the buyer to finish and sell it, he has equally parted with the article,
and made it the vehicle for transferring to the buyer ownership of the invention with respect to
that article." Id. at 252.
In Quanta, the Supreme Court determined that patent claims to methods for computer
memory and data usage were exhausted when the patent holder licensed a manufacturer to
produce and sell chipsets that could practice the patented methods when combined with memory
and buses in a computer system. See 553 U.S. at 621. The patent holder had tried to dictate the
computer system components that could be combined with the chipsets to practice the patented
methods by asserting its patent rights after the chipsets were sold. See id. The Court compared
the chipsets to the lens blanks in Univis, reasoning that "exhaustion was triggered by the sale of
the lens blanks becausetheir only reasonable and intended use was to practice the patent and
because they 'embodie[d] essential features of [the] patented invention.' Each of those attributes
is sharedby the microprocessors and chipsets Intel sold to Quantaunder the LicenseAgreement."
Quanta, 553 U.S. at 631 (internal citations omitted). The Court found that once the chipsets
were sold, or licensed for sale, the patent holder's rights were exhausted, and, therefore, a
purchaser did not infringe upon the patent by combining the chipsets with computer system
components from other manufacturers. The Court held that "the traditional bar on patent
restrictions following the sale of an item applies when the item sufficiently embodies the
patent—even if it does not completely practice the patent—such that its only and intended use is
to be finished under the terms of the patent." 553 U.S. at 628.
Contrary to Keurig's assertions, the Supreme Court did, in fact, emphasize the incomplete
nature of the products sold by the patent holders in both Univis and Quanta. This is evident in
the court's discussion in Univis, where it found that exhaustion applied both to situations where
"the licensee sells the patented article in its completed form" and where he "sells it before
completion for the purpose of enabling the buyer to finish and sell it." Univis, 316 U.S. at 242.
The Quanta court addressed the question of whether, "although sales of an incomplete article do
not necessarily exhaust the patent in that article, the sale of the [particular incomplete articles at
issue nonetheless] exhausted LGE's patents ...." Quanta, 553 U.S. at 630 (emphasis added).
That framing of the issue implies that sales of a "complete" article do necessarily exhaust the
patent in that article. That line of reasoning depends on a legally operative distinction between
"complete" and "incomplete" products.
The "substantial embodiment" test was created to provide a framework for determining
whether the sale of a component product, which by itself is not a complete product and cannot
practice the patented method, is still sufficient to exhaust a patentee's right to sue purchasers who
then practice the claimed methods using that component as part of a system or larger apparatus.
That is evident from the two prongs of the Quanta test (a product (1) including all the "inventive
aspects" of the patent claims and (2) having no "reasonablenon-infringing uses."). First, if a
componentproduct does not embody all the inventiveaspects of a method patent, a patentee has,
at the very least, clearly not forfeited his rights to those inventive aspects that are not embodied
by the product. Second, if the componentproduct has many reasonable uses, only some of which
infringeupon the method patent, not all purchasers would be willing to pay a price for that
product that reflected the value of the method patent rights. Neither of these concerns are present
when the product at issue is not a component, but rather a complete apparatus intended to be used
to practicethe patented method. Accordingly, the Court finds that the "substantial embodiment"
test is inapplicable to "complete" products that are intended to practice a patented method.
The more difficult question that has not been squarely addressed by the Supreme Court or
the Federal Circuit is at what point a product becomes "complete." Although the Supreme Court
did not fully expound on the distinction in either Univis or Quanta, both opinions do provide
some guidance. The Quanta and Univis line of cases attempted to deal with products that were
not "completed" in the sense that they were not ready for sale to the ultimate consumer or user.
As discussed above, Univis distinguished between the sale of a product in its "completed form"
and the sale of a product "before completion for the purpose of enabling the buyer to finish and
sell it." Univis, 316 U.S. at 242. Notably, the Court did not refer to enabling the buyer to "finish
and use " the product. This is in accord with the Court's determination in Quanta that "the
incomplete article substantially embodies the patent because the only step necessary to practice
the patent is the application of common processes or the addition of standard parts." Quanta,
553 U.S. at 633. Based on that line of reasoning, the definition of a "complete" product is an
article that is ready for consumer sale and use without the application of other manufacturing
processes or the addition of component parts. This description of what constitutes a "complete"
product is not unworkable (and quite sensible in light of the caselaw).
It is undisputed that to practice the claims of the method patents at issue, a Keurig brewer
must be combined with a beverage cartridge. However, that is a step that is intended to be
accomplished by the ultimate user afterthe sale of the brewer. Such a step is more akin to
supplying the apparatus with required resources (such as water or electrical power) than it is to
applying a manufacturing process or adding a component part necessary for the apparatus to be
complete. Notably, the apparatus also functions without the insertion of a beverage cartridge; it
can simply produce hot water. In contrast, the chipsets in Quanta did not function at all without
being combined with memory and buses in a computer system.6
Indeed, the Delaware court found that "plaintiff sells a product that completely practices
the patent," and went on to distinguish the brewers at issue here from the lens blanks at issue in
Univis by remarking that "unlike the lens blanks in Univis, [the brewers] are sold in a completed
form in accordance with the patents." Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS
130762 (D. Del. Sept. 13,2012). By the definition articulated above, this Court likewise finds
that the Keurig brewers at issue are in fact "complete" products because they are intended for
sale to the consumer for his or her use without the application of other manufacturing processes
Another formulation of the operativedistinction inQuanta is between products that "completely practice
the patent" and those that only "sufficiently embod[y] the patent," with only the latter requiring the application of the
"substantial embodiment" test. 553 U.S. at 628 (explaining Univis to hold that "the traditional bar on patent
restrictions following the sale of an item applies when the itemsufficiently embodies thepatent—even if it does not
completely practice thepatent..."). Under that formulation, the Keurig brewers "completely practice" the claims of
the '488 patent. Keurig argues that because the brewersrequirethe insertionof a beverage cartridge to practice the
claimed methods, the apparatus itself cannot be found to "completely practice"the patent. The Court disagrees. On
Keurig's reasoning, it is likely that no apparatuscould ever be found to "completely practice" a patented method
because almostall apparatuses require resources, such as raw materials, fuel, or even manpower, to function. For
example, a patentedmethodfor forming concreteusinga particular mixer apparatusis certainly"completely
practiced" by the mixerapparatus even if it is not soldwiththe dry concrete, water, and fuel necessary to operate it;
Keurig's reasoning would suggestotherwise. In contrast, the chipsets inQuanta required more than the provision of
resources to practicethe claimedmethods; they requiredfurtherassembly and combination with other complex
computercomponents. The Keurig brewers at issue here are more like the cement mixer than the computer chipset,
and the Court accordingly finds that they indeed "completely practice" the patented methods.
or the addition of component parts. Therefore, Keurig cannot assert direct infringement of the
method claims by consumers and, as a result, cannot assert indirect infringement of those claims
To rule otherwise would allow Keurig an end-run around the exhaustion doctrine by
claiming methods as well as the apparatus that practices them, which is a tactic that the Supreme
Court has explicitly admonished. See Quanta, 553 U.S. at 630 ("This case illustrates the danger
of allowing such an end-run around exhaustion."). As the Delaware court pointed out, "a review
of Supreme Court precedent on the law of patent exhaustion 'reveals that the Court has
consistently held that patent holders may not invoke patent law to enforce restrictions on the
postsale use oftheir patented products
'" Sturm Foods, 2012 U.S. Dist. LEXIS 130762 at 16
(quoting Static Control Components, Inc. v. LexmarkInt'l, Inc., 615 F. Supp. 2d 575, 582 (E.D.
Ky. 2009)). On Keurig's theory, although a consumer may purchase a Keurig brewer, he or she
could nonetheless be liable for patent infringement if he or she did not use Keurig beverage
cartridges whenoperating the brewer.7 Sucha resultwould violate the longstanding principle
that, when a product is "once lawfully made and sold, there is no restriction on [its] use to be
implied for the benefit of the patentee." Quanta, 553 U.S. at 630 (quoting Adams, 17 Walk, at
457,17 Wall. 453,21 L. Ed. 700, 1885 Dec. Comm'r Pat. 438).
Accordingly, JBR's motion for summary judgment on the issue of infringement of the
'488 patent will be granted.
7Also telling isthe fact that the alleged non-infringing use asserted by Keurig (the use ofa reusable
beverage cartridge) is only non-infringing in that it does not practice the "piercing" step of dependent claim 29, but it
does practice all of independent claim 22. Therefore, the user would still theoretically be liable for infringement if
the patent were not exhausted upon the sale of the brewer.
It is well-established that "[t]he right of 'repair' follows from the exhaustion of a
patentee's right to control the disposition of a patented article after it has been sold. The owner
may use, repair, and modify the device as long as there is not 'reconstruction of the entity as to
'in fact make a new article.'" Surfco Haw. v. Fin Control Sys. Pty., 264 F.3d 1062,1066 (Fed.
Cir. 2001) (citingAro Manufacturing, 365 U.S. at 346). JBR contends that the doctrine of
permissible repair allows users of Keurig brewers to replace spent beverage cartridges with
cartridges manufactured and sold by entities other than Keurig. Keurig does not contend that
replacing a spent beverage cartridge with a new one amounts to impermissible reconstruction of
the patented product. Instead, Keurig contends that patent exhaustion is a necessary prerequisite
to the operation of the doctrine of permissible repair, and that its rights to the patent claims at
issue have not been exhausted.
The Court agrees that "[t]he affirmative defense of repair only applies to products whose
patent rights have been exhausted ..." Fuji Photo Film Co. v. ITC, 474 F.3d 1281,1293 (Fed.
Cir. 2007); see also Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368,1372 (Fed. Cir.
2005) ("the repair affirmative defense is based upon the exhaustion doctrine."). However, for the
reasons set forth above, the Court finds that the patent claims at issue have all been exhausted.
Accordingly, the doctrine of permissible repair allows users to replace spent cartridges with
whatever parts they choose without infringing upon Keurig's patents. Therefore, Keurig cannot
assert direct infringement of its patents by users and, as a result, cannot assert indirect
infringement of its patents by JBR.
Accordingly, JBR's motion for summary judgment on the issue of infringement of the
'138 and '488 patents will be granted.
For the foregoing reasons, JBR's motions for summary judgment as to the infringement
of U.S. Patent No. D502, 362; U.S. Patent No. 7,165,488; and U.S. Patent No. 7,347,138 are
/s/ F. Dennis Savior
F. Dennis Saylor IV
United States District Judge
Dated: May 24,2013
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