Rothschild Connected Devices Innovations, LLC v. Coca Cola Company
Filing
201
OPINION AND ORDER: The Defendants 138 Motion for SummaryJudgment is GRANTED as tonon-infringement of Claims 11, 12, 17, and 21-23, and DENIED as to theinvalidity of U.S. Patent No. 8,417,377. Signed by Judge Thomas W. Thrash, Jr. on 4/23/2019. (sap)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
ROTHSCHILD CONNECTED
DEVICES INNOVATIONS, LLC,
Plaintiff,
v.
CIVIL ACTION FILE
NO. 1:16-CV-1241-TWT
THE COCA-COLA COMPANY,
Defendant.
OPINION AND ORDER
This is a patent infringement lawsuit involving Coca-Cola’s Freestyle
Dispenser. It is before the Court on the Defendant’s Motion for Summary
Judgment of Non-Infringement and Invalidity [Doc. 138]. For the reasons set
forth below, the Defendant’s Motion for Summary Judgment of NonInfringement and Invalidity [Doc. 138] is GRANTED as to non-infringement of
Claims 11, 12, 17, and 21-23, and DENIED as to the invalidity of U.S. Patent
No. 8,417,377.
I. Background
The Plaintiff Rothschild Connective Devices Innovations, LLC is a Texas
limited liability company with its principal place of business in Plano, Texas.1
1
Def.’s Statement of Material Facts ¶ 1.
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Rothschild is the owner of U.S. Patent No. 8,417,377 (“the ‘377 Patent”).2
The
‘377 Patent, issued on April 9, 2013, covers “a system and method for creating
a personalized consumer product.”3 The patented subject matter relates to a
system in which a consumer can customize a product and transmit these
product preferences to a dispenser with mixing capabilities. The claims at issue
in this case involve a beverage dispenser. These claims describe a beverage
dispenser that produces a personalized beverage based upon a user’s
individual beverage product preferences.
The Defendant The Coca-Cola Company is a Delaware corporation with
its principal place of business in Atlanta, Georgia.4 Coca-Cola makes, sells,
uses, offers to sell, and sells the “Freestyle Dispenser,” a beverage dispenser
that allows users to select a desired beverage from over one hundred beverage
choices. The Freestyle Dispenser is a chilled beverage vending device that
dispenses customized blends of carbonated and non-carbonated soft drinks.5
The Freestyle offers over one hundred pre-programmed, specially-formulated
2
Id. ¶ 2.
3
‘377 Patent, 1:1-2.
4
First Am. Compl. ¶ 2.
5
Pl.’s Statement of Material Facts ¶ 7.
2
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soft drink blends.6 It also allows a user to create a custom blended drink.7
The Freestyle Dispenser is an example of the technological shift in soda
fountains and beverage dispensers. In the past, the vast majority of carbonated
drink dispensers used “post-mix drink syrup” – large, bag-in-box flavor syrups
that would connect through a hose to a beverage dispenser.8 These beverage
dispensers only allowed for a handful of options – usually about ten drink
brands at a particular dispenser. 9 Users also could not customize their
drinks.10 Because of these limitations, the beverage industry began to look for
ways to offer more customization and flavoring options. 11 One example of
these efforts is the “micro-dosing system.”12 As opposed to the traditional postmix syrup system, micro-dosing uses a mix of highly-concentrated base of
micro-dosed ingredients, a sweetener, and water to create a beverage.13 This
system, which is vastly more space efficient than the traditional post-mix
6
Id. ¶ 8.
7
Id.
8
Wolski Expert Report [Doc. 138-20] ¶ 35.
9
Id. ¶ 36.
10
Id.
11
Id. ¶ 37.
12
Id. ¶ 43.
13
Id.
3
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syrup, allowed for a wider variety of beverages to be dispensed from a
particular dispenser.14
The Freestyle uses two main categories of ingredients: microingredients and macro-ingredients.15 The macro-ingredients, which comprise
the majority of the volume of the beverages, include high fructose corn syrup,
carbonated water, and plain water.16 The micro-ingredients, which are stored
in box-like cartridges, contain the individual flavor elements, such as CocaCola or Sprite.
17
These micro-ingredients are highly-concentrated. The
cartridges that store these micro-ingredients are much smaller than the
traditional post-mix drink syrup containers. A Freestyle Dispenser can hold up
to 40 individual micro-ingredient cartridges. 18 The macro-ingredients – the
carbonated water, plain water, and high fructose corn syrup – are combined in
a circular enclosure inside the dispenser and dispensed from a nozzle
assembly.19 The micro-ingredients – the flavor elements – are added mid-air
14
Id. ¶ 44.
15
Pl.’s Statement of Material Facts ¶ 13.
16
Id. ¶ 14.
17
Id. ¶ 15.
18
Id. ¶ 16.
19
Id. ¶ 45.
4
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to this stream of macro-ingredients, just outside of the nozzle assembly.20
The Freestyle Dispenser distinguishes between two types of beverage
products. 21 “Drinks” are pre-programmed recipes listed on the touchscreen
monitor of the dispenser.22 The Freestyle Dispenser can offer over 100 preprogrammed beverage options.23 “Mixes” are custom blends of drinks that are
made from additional combinations of flavor elements. 24 The Freestyle
Dispenser has a mobile phone application (the “Freestyle App”), that allows
users to interact with Coca-Cola’s database.25 A user can utilize the Freestyle
App to save a drink mix that will be stored in the Coca-Cola database. 26
Rothschild contends that the Freestyle Dispenser infringes Claims 11, 12, 17,
and 21-23 of the ‘377 Patent. Specifically, Rothschild alleges that the use of the
Freestyle Dispenser, in conjunction with the Freestyle App, to create a
personalized beverage product infringes these claims. Coca-Cola now moves for
summary judgment as to non-infringement and invalidity.
20
Id. ¶ 46.
21
Id. ¶ 26.
22
Id. ¶ 27.
23
Id.
24
Id. ¶ 30.
25
Id. ¶ 25.
26
Id. ¶ 32.
5
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II. Legal Standard
Summary
judgment
is
appropriate
only
when
the
pleadings,
depositions, and affidavits submitted by the parties show no genuine issue of
material fact exists and that the movant is entitled to judgment as a matter of
law. 27 The court should view the evidence and any inferences that may be
drawn in the light most favorable to the nonmovant. 28 The party seeking
summary judgment must first identify grounds to show the absence of a
genuine issue of material fact.29 The burden then shifts to the non-movant,
who must go beyond the pleadings and present affirmative evidence to show
that a genuine issue of material fact exists.30 AA mere >scintilla= of evidence
supporting the opposing party=s position will not suffice; there must be a
sufficient showing that the jury could reasonably find for that party.@31
III. Discussion
A. Infringement
Coca-Cola first moves for summary judgment as to infringement. Patent
infringement analysis involves a two-step process. First, the claims of the
27
FED. R. CIV. P. 56(a).
28
Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970).
29
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
30
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986).
31
Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990).
6
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patent must be construed as a matter of law. Second, the claims as construed
must be compared to the accused product.32 “Infringement is a question of
fact.” 33 “To prove infringement, the patentee must show that an accused
product embodies all limitations of the claim either literally or by the doctrine
of equivalents.”34 “If any claim limitation is absent from the accused device,
there is no literal infringement as a matter of law.”35
1. Discovery Disputes and the Dependent Claims
Coca-Cola first argues that the Court should enter summary judgment
as to non-infringement because Rothschild refused to provide certain
disclosures during discovery. Specifically, Coca-Cola argues that Rothschild
waited until after the end of fact discovery to disclose its infringement
contentions,36 and that it failed to meet its disclosure obligations under the
Local Patent Rules and the Federal Rules of Civil Procedure.37 Although CocaCola certainly could have been more diligent in raisings these complaints
32
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1323
(Fed. Cir. 2001).
33
Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376,
1378 (Fed. Cir. 2013).
34
Cir. 2013).
Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1340 (Fed.
35
Id.
36
Def.’s Mot. for Summ. J., at 7-12.
37
Id. at 12-18.
7
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during the discovery period, Rothschild persisted in refusing to disclose the
large majority of its infringement allegations. In fact, in reviewing the portions
of the record relating to discovery in this case, it was never clear exactly which
dependent claims Rothschild intended to assert and what its purported basis
for recovery was under those claims. Coca-Cola repeatedly requested
Rothschild to disclose the claims it intended to assert, and Rothschild
consistently failed to provide an adequate disclosure. Both parties contributed
to this mess.
Some context of the procedural development of this case will be helpful
in analyzing Coca-Cola’s grievances as to the discovery disputes here. This case
was originally filed in the Southern District of Florida and was subsequently
transferred to this District in April 2016. At that point, the parties had already
filed their opening claim construction briefs with the Southern District of
Florida. Then, at a scheduling conference in December 2016, Coca-Cola
requested that the Court compel Rothschild to serve infringement contentions
as required by Local Patent Rule 4.1. Local Patent Rule 4.1 requires a party
claiming patent infringement to provide the opposing party a Disclosure of
Infringement Contentions, including, among other things, “[a] chart
identifying specifically where each element of each asserted claim is found
within each Accused Instrumentality.” 38 The Court declined this request,
noting that this issue had already been addressed by the claim construction
38
N.D. Ga. Patent L.R. 4.1(b)(3).
8
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briefs, and that it did not believe it was necessary to go back and apply
deadlines that would have applied had the case been originally filed in this
District.39
In December 2016, Coca-Cola served its first interrogatory on
Rothschild, seeking, among other things, infringement contentions similar to
those that would have been disclosed under the Local Patent Rules. 40
Specifically, Coca-Cola requested that Rothschild:
Identify each claim of the ’377 Patent that You contend Coca-Cola
has infringed, and for each identified claim, state the entire
factual basis for Your contention that the claim is infringed,
including without limitation: (i) an identification of each accused
apparatus,
method,
composition,
or
other
accused
instrumentality; (ii) where each element of each claim is found
within each accused instrumentality, including the identity of the
structures, acts, or materials in the accused instrumentalities
that perform the claimed function; and (iii) whether each element
of each asserted claim is claimed to be literally present, present
under the doctrine of equivalents, or both, in each accused
instrumentality that performs the claimed function.41
In its first response to this interrogatory, Rothschild stated that it was
“drop[ping]” its allegations under Claim 1 of the ‘377 Patent, and intended to
assert Claim 11 of the ‘377 Patent and “dependent claims therefrom.” 42
However, it did not identify which dependent claims it intended to assert, or
39
Transcript [Doc. 138-12], at 7.
40
Def.’s Statement of Material Facts ¶ 23.
41
Id.; Def.’s Statement of Material Facts, Ex. 31 [Doc. 138-33], at 7.
42
Def.’s Statement of Material Facts, Ex. 9 [Doc. 138-11], at 5.
9
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the basis for its contention that the Freestyle Dispenser infringed these claims.
Then, in its Supplemental Response to Defendant’s First Set of
Interrogatories, Rothschild listed documents that “identify a component of the
Freestyle dispenser that RCDI alleges to be a ‘mixing chamber.’” 43 These
documents included various patents assigned to Coca-Cola. Rothschild
contended that these patents identified parts of the Freestyle Dispenser that
meet the limitations of Claim 11. 44 After that, in its Second Supplemental
Responses to Defendant’s First Set of Interrogatories, Rothschild identified
documents concerning Coca-Cola’s manufacturing partner Inventech and the
“dispensing nozzle” in the Freestyle Dispenser.45 Rothschild further discussed
various patents assigned to Coca-Cola that it believed supported its
infringement arguments.46 Thus, despite Coca-Cola’s request that it identify
each claim of the ‘377 Patent that it intended to assert, Rothschild provided
nothing more than that it intended to assert Claim 11 and its dependent
claims.
Instead, the only disclosure by Rothschild as to which dependent claims
it intended to assert was by email communication. On March 21, 2018, counsel
for Coca-Cola emailed counsel for Rothschild, stating that “[s]ince expert
43
Def.’s Statement of Material Facts, Ex. 12 [Doc. 138-14], at 5.
44
Id.
45
Def.’s Statement of Material Facts, Ex. 13 [Doc. 138-15], at 6-9.
46
Id.
10
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reports are due a week from today, please confirm that only claim 11 is being
asserted, or if that’s not correct, identify which other claims of the ‘377 patent
RCDI is asserting in this case.” 47 Counsel for Rothschild responded: “Our
proposed amended complaint only asserts infringement of claims 11-13, 15, 17,
19, and 21-25 of the '377 patent. To streamline the case, we hereby drop claims
13, 15, 19, 24 and 25 from that list.”48 As far as the Court is aware, this is the
only time that Rothschild disclosed which dependent claims it intended to
assert,
outside
of
the
Proposed
Amended
Complaint.
This
email
communication, nearly two years after Coca-Cola first served interrogatories,
is not an adequate manner of responding to Coca-Cola’s discovery request.
Rothschild’s First Amended Complaint adds to some of this confusion.
In March 2016, before this action was transferred to this District, Rothschild
moved for leave to file a First Amended Complaint.49 In a draft of the First
Amended Complaint attached to that motion, Rothschild added allegations,
asserting that Coca-Cola infringed Claims 11-13, 15, 17, 19, and 21-25 of the
‘377 Patent.50 This motion, which was originally filed while this case was in
the Southern District of Florida, sat on the docket until Rothschild brought it
up at a status conference in April 2018. Although Coca-Cola originally opposed
47
See [Doc. 138-6], at 2.
48
Id.
49
See [Doc. 35].
50
See [Doc. 35-1] ¶¶ 11, 23.
11
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this motion, it informed the Court at the April 2018 status conference that it
no longer opposed the motion. Because of this, the Court granted Rothschild’s
Motion for Leave to File a First Amended Complaint on May 16, 2018. 51
However, Rothschild did not file its First Amended Complaint until August 9,
2018 – almost 4 months later, and one day after Coca-Cola filed its original
Motion for Summary Judgment.
52
In the First Amended Complaint,
Rothschild alleges that the Freestyle Dispenser infringes Claims 11-12, 17, and
21-23 of the ‘377 Patent.53 Coca-Cola then moved to strike the First Amended
Complaint, arguing that it was untimely. 54 The Court denied Coca-Cola’s
Motion to Strike the First Amended Complaint.55
Although the Court declined to compel Rothschild to serve infringement
contentions under the Local Patent Rules, and declined to strike the First
Amended Complaint as untimely, it has become clear that Rothschild has acted
like a moving target throughout this litigation, avoiding providing disclosures
51
See [Doc. 121].
See [Doc. 136]. Coca-Cola originally filed its Motion for Summary
Judgment on August 8, 2018. See [Doc. 133]. However, with the Court’s
52
permission, it withdrew that original filing and filed a new Motion Summary
Judgment on August 9, 2018, due to difficulties in uploading documents to the
Case Management/Electronic Case Files system. See [Doc. 137], [Doc. 138], and
[Doc. 146].
53
First Am. Compl. ¶¶ 11, 23.
54
See [Doc. 148].
55
See [Doc. 195].
12
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that it was obligated to provide under the Federal Rules of Civil Procedure.
The fact that Rothschild disclosed which claims it intended to assert by e-mail,
after fact discovery ended, and one week before expert discovery was set to
close, does not remedy the harms it caused through this gamesmanship. This
gamesmanship is further evidenced by the fact that Rothschild waited until
after Coca-Cola filed its Motion for Summary Judgment to file its First
Amended Complaint, nearly four months after the Court granted leave to
amend.
Rothschild argues that Coca-Cola knew what claims it was asserting.56
Rothschild contends that the original Complaint asserted “at least” Claim 11,
and that it later moved to amend to include allegations that Coca-Cola
infringed Claims 11-13, 15, 17, 19, and 21-25. 57 Furthermore, Rothschild
explains that, when requested, it responded to Coca-Cola’s counsel with the
list of clams on the same day. On March 21, 2018, counsel for Rothschild
responded to an email from Coca-Cola’s counsel, stating that Rothschild
intended to assert the claims listed in its Proposed Amended Complaint,
namely Claims 11, 12, 17, and 21-23 of the ‘377 Patent.58 This was after two
years of discovery: fact discovery had already closed, and only a week remained
before Coca-Cola’s expert report on invalidity was due. Rothschild’s belated
56
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 1-2.
57
Id. at 1.
58
[Doc. 138-6].
13
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disclosure via email of the claims it intended to assert does not serve as an
adequate substitution for response to interrogatories.
Rothschild also argues that a discovery motion, and not this Motion for
Summary Judgment, would have been the appropriate vehicle for Coca-Cola to
air its grievances. It argues that the summary judgment stage is not the
appropriate time to raise these complaints, and that Coca-Cola should have
moved the Court to compel Rothschild to produce adequate responses to its
interrogatories. 59 Although a motion to compel would have been the most
appropriate method for dealing with this dispute, the Court is not precluded
from addressing these issues at the summary judgment stage. Rothschild cites
Cummings-Harris v. Kaiser Foundation Health Plan of Georgia, Inc. in
support of its contention.60 However, Cummings-Harris weighs in Coca-Cola’s
favor. There, the defendant refused to respond to an interrogatory to which it
was obligated to respond under Rule 26.61 The court noted that it is “textbook,
‘Discovery 101’ that a plaintiff cannot wait until after a summary judgment
motion is filed by a defendant to complain that the defendant has failed to
produce necessary discovery.”62 Instead, a party in such a situation is expected
59
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 2.
60
Cummings-Harris v. Kaiser Found. Health Plan of Ga, Inc., No.
1:12-cv-0984-JEC, 2013 WL 5350937 (N.D. Ga. Sept. 23, 2013).
61
Id. at *7.
62
Id.
14
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to file a motion to compel prior to the filing of summary judgment motions.63
However, the court did not rule in the defendant’s favor. It noted that
while “this Court would normally ignore the plaintiffs’ excuses for their
absence of evidence to counter the defendant’s argument that plaintiffs have
not proven their case,” it “will not do so here.”64 It explained that “it is obvious
that in a case alleging age discrimination, a defendant should provide the
plaintiff with information regarding the ages of employees who were retained
or hired to replace the plaintiff.” 65 It further explained that “[c]learly,
plaintiffs’ counsel’s failure to file an appropriate motion to compel was sloppy
and amateurish. Yet, defendant’s failure to produce this information hardly
puts it in a better light.”66 Similarly, it is obvious in a patent infringement case
that a plaintiff should provide the defendant with information relating to
which claims it intends to assert. Coca-Cola’s failure to file a motion to compel
was unfortunate. Nonetheless, Rothschild’s steadfast refusal to comply with
its discovery obligations does not put it in a position to point fingers. “[D]eeply
rooted in the common law tradition is the power of any court to manage its
affairs.” 67 Therefore, due to Rothschild’s consistent refusal to identify the
63
Id.
64
Id. at *8.
65
Id.
66
Id.
67
Carlucci v. Piper Aircraft Corp., 775 F.2d 1440, 1447 (11th Cir.
15
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dependent claims that it would assert, the Court will preclude it from asserting
any of the dependent claims. Such a decision is within this Court’s inherent
authority to manage the affairs of its cases. Therefore, Coca-Cola is entitled to
summary judgment as to Claims 12, 17, and 21-23.
Coca-Cola also argues that the Court should enter summary judgment
as to Claim 11 because Rothschild’s discovery responses as to that claim are
also inadequate.68 However, the Court will not enter summary judgment as to
Claim 11 based upon these discovery complaints. It has been clear from the
beginning of this action that Rothschild intended to assert independent Claim
11. Although Rothschild should have disclosed the basis for its contention that
the Freestyle Dispenser infringes Claim 11, Coca-Cola likewise should have
been more diligent in pursuing these contentions. Since Coca-Cola was aware
that Claim 11 was being asserted, in contrast to the dependent claims, the
Court will not enter summary judgment as to Claim 11 on this basis.
2. Claim 11
Next, Coca-Cola moves for summary judgment as to infringement of
Claim 11. Claim 11 of the ‘377 Patent describes:
11. A beverage dispenser comprising:
at least one compartment containing an element of a
beverage;
at least one valve coupling the at least one compartment to
1985) (internal quotations omitted).
68
Def.’s Mot. for Summ. J., at 14.
16
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a dispensing section configured to dispense the beverage;
a mixing chamber for mixing the beverage;
a user interface module configured to receive and[sic]
identity of a user and an identifier of the beverage;
a communication module configured to transmit the
identity of the user and the identifier of the beverage to a
server over a network, receive user generated beverage
product preferences based on the identity of the user and
the identifier of the beverage from the server and
communication the user generated beverage product
preferences to controller; and
the controller coupled to the communication module and
configured to actuate the at least one valve to control an
amount of the element to be dispensed and to actuate the
mixing chamber based on the user generated beverage
product preferences.69
According to Coca-Cola, Rothschild has failed to provide sufficient evidence
that the Freestyle Dispenser has a “mixing chamber,” that it uses “valves,” that
it has a “controller” that “actuates” the mixing chamber, that it has a
“dispensing section,” and that it has a “user interface module” within the
meaning of the claim language. Rothschild argues that the Court should not
grant summary judgment as to infringement because a dispute of fact
sufficient for jury consideration exists as to each of these issues. The Court will
address each of these arguments in turn.
i. Mixing Chamber
Coca-Cola first argues that Rothschild has failed to show that the
69
‘377 Patent 9:43-63.
17
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Freestyle Dispenser contains a “mixing chamber.” Claim 11 describes a
beverage dispenser comprising “a mixing chamber for mixing the beverage.”70
The Court construed “mixing chamber” to mean “an area where beverage
elements are combined.”71 According to Coca-Cola, Rothschild has not shown
that the Freestyle Dispenser contains an area where beverage elements are
combined together.72 Instead, according to Coca-Cola, the beverage elements
are not mixed together until they are outside of the dispenser – in mid-air
below the nozzle.73 Coca-Cola emphasizes that this distinction is important –
it purposefully designed the mixing function this way to prevent flavors from
lingering from one dispensed beverage to the next.74 Thus, under this view,
there is no mixing chamber in the Freestyle because the beverage elements are
combined outside of the dispenser, in mid-air, and not inside some type of
chamber in the Freestyle.
Rothschild, in response, argues that the Freestyle arguably has two
70
‘377 Patent 9:49.
Claim Construction Opinion and Order, at 11-12. The Court
rejected Coca-Cola’s proposed construction that “mixing chamber” means “a
component for holding and mechanically blending all of the elements required
to produce the beverage, when actuated by the controller.” Id.
71
72
Def.’s Mot. for Summ. J., at 20.
73
Id.
74
Id.
18
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“mixing chambers” within the meaning of the claim language. 75 First,
Rothschild contends that a jury could conclude that the area in the Freestyle
where carbonated water and high fructose corn syrup combine meets the
requirements of a “mixing chamber.” Second, Rothschild argues that a jury
could find that the area just outside the nozzle assembly, where the high
fructose corn syrup and carbonated water (the macro-ingredients) meet the
flavor ingredients (the micro-ingredients), is a mixing chamber within the
meaning of Claim 11.76 The Court agrees that a reasonable jury could find that
either of these areas of the Freestyle Dispenser constitutes a “mixing chamber”
within the meaning of the claim language.
First, Rothschild argues that the area in the nozzle assembly where
carbonated water and high fructose corn syrup are mixed can be considered a
“mixing chamber.”77 In the Freestyle Dispenser, the carbonated water, high
fructose corn syrup, and water are mixed in a circular enclosure inside the
dispenser’s nozzle assembly. 78 These macro-ingredients are then dispensed
through a finned extrusion in one large stream. 79 The finned extrusion is
pictured here:
75
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 4.
76
Id.
77
Id. at 4, 6-7.
78
Pl.’s Statement of Material Facts ¶ 45.
79
Curley Expert Report [Doc. 161-1] ¶ 53.
19
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80
A ring of small nozzles surrounds the finned extrusion.81 These nozzles inject
the flavor concentrates – the micro-ingredients – into the main stream at an
angle.82 An injection of a micro-ingredient into stream of macro-ingredients is
pictured here:
83
Curley, Rothschild’s expert, provides the following graphic illustrations of the
Freestyle’s nozzle assembly:
80
Id. ¶ 54.
81
Id. ¶ 53.
82
Id.
83
Id. ¶ 54.
20
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84
Rothschild contends that this circular enclosure where the macro-ingredients
combine constitutes a “mixing chamber.”85
Coca-Cola argues that this area cannot constitute a “mixing chamber”
because the macro-ingredients – water, carbonated water, and high fructose
corn syrup – are not “elements” within the meaning of Claim 11. Thus, this
area of the nozzle assembly would not be an area where “elements” of the
beverage are combined.86 Essentially, Coca-Cola argues that, under the claim
language, an ingredient can only be an “element” of the beverage if it is
contained in a “compartment.”87 Under this theory, the macro-ingredients are
not “elements” of a beverage because they are not contained in “compartments”
The Court recognizes that Curley has labeled a component of this
nozzle assembly as a “mixing chamber.” The Court realizes that this label does
not determine whether the component is actually a “mixing chamber” within
the meaning of the claim language. Nonetheless, the Court has included these
graphics as helpful aids in its analysis.
84
85
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 6.
86
Def.’s Mot. for Summ. J., at 21-22.
87
Id.
21
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of the Freestyle as the micro-ingredients are.88
However, this argument misconstrues the language of Claim 11. Claim
11 describes “at least one compartment containing an element of a beverage.”89
This language does not provide that every element must be stored in a
compartment. Instead, it merely provides that there must be at least one
compartment that contains an element of a beverage. This language does not
imply that, for an ingredient to be an element, it must be stored in a
compartment. 90 Therefore, on its face, this argument fails to persuade the
Court. Nothing in the claim language precludes a dispenser where some
elements are stored in compartments and some elements are not, as long as
there is at least one compartment that stores an element of the beverage.
Furthermore, even if this interpretation of the claim language were
correct, a reasonable jury could conclude that the high fructose corn syrup is
contained in a “compartment” of the Freestyle Dispenser. The parties did not
dispute the meaning of the term “compartment” at the claim construction
stage. Therefore, it should be given its plain and ordinary meaning.91 CocaCola argues that high fructose corn syrup is not contained in a “compartment”
88
Id.
89
‘377 Patent 9:44-45.
90
Cf. Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (“Use
of the phrase ‘at least one’ means that there could be only one or more than
one.”).
91
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
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of the Freestyle because it is “contained in a bag-in-box type container outside”
of the dispenser.92 The high fructose corn syrup is stored in a bag-in-box carton
that sits outside of the Freestyle Dispenser and is fed by tubing into the
dispenser to create a beverage. 93 However, a reasonable jury could still
conclude that this carton, while sitting outside of the casing of the dispenser,
still “comprises” part of the beverage dispenser. The term “comprising” does
not require each element to be physically inside of a single enclosure. 94
Instead, this language provides that the beverage dispenser must have all of
these elements.
95
Thus, the compartments of the beverage dispenser
envisioned by Claim 11 need not physically be in the casing of the dispenser.
The fact that it is physically part of the dispenser is enough.96 High fructose
92
Def.’s Mot. for Summ. J., at 21.
93
Def.’s Statement of Material Facts ¶ 113.
94
See Server Tech., Inc. v. Am. Power Conversion Corp., 657 F.
App’x 1030, 1034 (Fed. Cir. 2016) (“The district court incorrectly interpreted
the term ‘comprising’ in claim 15 of the ‘543 patent to require that all six
elements must be contained inside a single enclosure.”).
See id. (“The use of the word ‘comprising’ only means that the
plugstrip must have at least all six of the claimed elements, but not that all six
elements must be contained in a single enclosure.”).
95
This conclusion is not inconsistent with the Court’s claim
construction ruling, in which it determined that a dispenser “comprised” of
elements is “most naturally read to be physically made up of these different
parts.” Claim Construction Opinion and Order, at 14. A component that is not
inside of the casing of the dispenser, but nonetheless sits immediately outside
of the dispenser and is connected by tubing – such as the bag-in-a-box carton
of high fructose corn syrup – could reasonably be considered a physical
component of the apparatus.
96
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corn syrup would nonetheless still be considered an “element” under this rigid
construction. Because of this, a reasonable jury could conclude that the area
within the nozzle assembly of the Freestyle, where the macro-ingredients mix,
is a “mixing chamber.”
Second, Rothschild argues that the mid-air area outside of the nozzle
assembly, where the macro-ingredients (water, carbonated water, and high
fructose corn syrup) and micro-ingredients (flavor elements) are mixed, is a
mixing chamber.
97
Rothschild contends that this area outside of the
dispenser’s nozzle is “an area where beverage elements are combined,” and the
fact that it is outside of the casing of the dispenser is irrelevant. Rothschild
emphasizes that this combination of macro-ingredients and micro-ingredients
occurs in a concavity of the dispenser, and it does not matter that it happens
mid-air. Curley, Rothschild’s expert, explains that this “hollow portion” of the
Freestyle Dispenser’s cabinet is referred to as the “ellipse,” and opines that it
is an area of the dispenser.98 He further asserts that the “entire assembly” of
a finned extrusion mounted on the macro-ingredient chamber, with jet streams
for the micro-ingredients, constitutes a “mixing chamber” within the meaning
of the claim construction.99
Coca-Cola responds that this cannot constitute a “mixing chamber” as a
97
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 5.
98
Curley Expert Report [Doc. 161-1] ¶ 24.
99
Id. ¶ 60.
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matter of law. It argues that there is no area in the Freestyle where beverage
elements are combined. Instead, the beverage elements are combined mid-air,
above the user’s cup, not in an area of the dispenser. Thus, according to CocaCola, it cannot have a mixing chamber.
100
Coca-Cola relies upon the
declaration of its expert, Wolski, for this proposition. In this declaration,
Wolski contends that the “[m]icro-ingredients are not mixed within the
Freestyle dispenser, they are mixed after leaving the dispenser’s nozzle
assembly, both in the air and in a Freestyle user’s cup.”101
The Court agrees with Rothschild that question of fact exists as to this
issue. A reasonable jury could conclude that the mid-air area below the nozzle
assembly and above the user’s cup, where the micro-ingredient flavor elements
mix with the macro-ingredients, is an area where “beverage elements are
combined.” As Rothschild points out, a user places his or her cup in a concavity
of the dispenser, below the nozzle assembly, and the beverage elements
combine mid-air in this concavity before reaching the user’s cup. A jury could
reasonably conclude this mid-air concavity, where the cup is placed and where
the drink elements combine, is a “mixing chamber” within the meaning of
Claim 11. Both Coca-Cola and Rothschild provide sufficient evidence, in the
form of expert witnesses, that support their infringement arguments as to the
“mixing chamber” element.
100
Def.’s Mot. for Summ. J., at 20.
101
Wolski Decl. [Doc. 138-31] ¶ 20.
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Coca-Cola’s non-infringement argument is essentially a repackaging of
its claim construction arguments. At the claim construction stage, the Court
rejected Coca-Cola’s proposed construction that the mixing chamber must be
an area where the elements are held and mechanically blended.102 The Court
explained that Coca-Cola’s proposed construction “would preclude a mixing
chamber that mixes the elements as they pass through the chamber without
being held” and concluded that, “[s]ince this limitation is not present in the
claim, a construction requiring the mixing chamber to ‘hold’ the elements is
improper.”103 Coca-Cola’s present argument that there must be some kind of
discrete area where the beverage elements are combined to meet this claim
limitation uses the same logic as its rejected claim construction.
Coca-Cola then argues that the Freestyle does not have a “mixing
chamber” within the meaning of Claim 11 because it does not have a
“controller” that “actuates” the mixing chamber responsive to the user’s
product preferences.104 Claim 11 states that the “controller” is “coupled to the
communication module” and configured “to actuate the mixing chamber based
on the user gene[r]ated beverage product preferences.”105 The Court construed
this claim language to mean “capable of causing the mixing chamber to mix a
102
Claim Construction Opinion and Order, at 12.
103
Id.
104
Def.’s Mot. for Summ. J., at 24.
105
‘377 Patent 9:59-63.
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beverage responsive to user’s beverage product preference.”106 According to
Coca-Cola, the Freestyle does not meet this limitation because “responsive”
modifies “mix,” and the purported mixing chamber identified by Rothschild’s
expert does not physically change the manner in which it mixes based upon
the user’s product preferences. Thus, the mixing chamber is not “responsive”
to the product preferences because the “mixing” function always operates the
same way. The Court is not persuaded by this contorted interpretation of the
claim language. The parties did not propose construction of the term
“responsive.” Therefore, it is given its plain and ordinary meaning. A person of
ordinary skill in the art could, and most likely would, read this claim language
to mean that the mixing chamber works to produce a beverage that is
responsive to the user’s product preferences – not that the mixing chamber
mixes the beverage in some specific way that is responsive to the preferences
of the user.
ii. Dispensing Section
Next, Coca-Cola contends that the Freestyle Dispenser does not contain
a “dispensing section” as required by Claim 11. The claim describes a
“dispensing section configured to dispense the beverage.” 107 The Court
construed “dispensing section” to mean “a component for directing the flow of
106
Claim Construction Opinion and Order, at 24-25.
107
‘377 Patent 9:47-48.
27
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a beverage.”108 At the claim construction stage, the Court acknowledged that
the specification of the ‘377 Patent envisioned multiple versions of the
dispensing section: one that mixes the beverage itself, and another where the
beverage has already been mixed before it enters the dispensing section.109
Coca-Cola now argues that the Freestyle Dispenser does not contain a
dispensing section because no physical component of the dispenser forms or
releases a beverage.110 Thus, since no beverage is formed in the machine, it
cannot contain a dispensing section because it does not have a component for
directing the flow of a “beverage.”111 Similar to its argument regarding the
“mixing chamber,” Coca-Cola emphasizes that the Freestyle Dispenser utilizes
an “air-mix” technology, where the machine dispenses unmixed microingredients that combine in mid-air with the mixed macro-ingredients.
Therefore, according to Coca-Cola, it is impossible for the Freestyle to contain
a “component for directing the flow of a beverage” because no beverage exists
in any physical part of the machine.112
However, a reasonable jury could conclude that the Freestyle Dispenser
Claim Construction Opinion and Order, at 8-11. In doing so, the
Court rejected Coca-Cola’s proposed construction that “dispensing section”
means “a component for directing the flow of a mixed beverage.” Id. at 8-9.
108
109
Id.
110
Def.’s Mot. for Summ. J., at 25-26.
111
Id. at 26.
112
Id.
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meets the “dispensing section” limitation. Coca-Cola’s argument implies that
a “dispensing section” can only exist if it dispenses an already-mixed beverage.
However, a reasonable jury could conclude that a component that dispenses
various elements of a beverage into a stream, creating a beverage, is a
“component for directing the flow of a beverage.” Coca-Cola is attempting to
relitigate the Court’s claim construction ruling. The Court noted in its Claim
Construction Opinion and Order that “[e]ssentially, the parties dispute
whether the beverage must have been mixed before entering the dispensing
section, or whether it can be mixed in the dispensing section.”113 Coca-Cola
argued, and the Court disagreed, that the “mixing chamber” and the
“dispensing section” must be separate components.114 The Court, in rejecting
Coca-Cola’s proposed construction that the dispensing section is a component
for directing the flow of a mixed beverage, concluded that the ‘377 Patent
covered dispensers in which the dispensing section itself mixes the elements of
the beverage. A reasonable jury could find that the Freestyle contains a
component that directs the flow of a beverage, whether mixed or unmixed.115
113
Claim Construction Opinion and Order, at 9.
114
Id. at 10-11.
Furthermore, Rothschild correctly points out that Coca-Cola’s
argument is belied by the fact that some beverages dispensed from the machine
may contain only combinations of water, carbonated water, or high fructose
corn syrup. Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 19. Thus, even if
Coca-Cola were correct that a dispensing section can only dispense a mixed
beverage, the Freestyle Dispenser would still meet this element. In such a
situation, the Freestyle would be dispensing a mixed beverage.
115
29
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Furthermore, Coca-Cola’s expert report on non-infringement does not
address whether the Freestyle Dispenser has a “dispensing section.” In fact, in
support of his opinion that the Freestyle contains pumps and not valves, CocaCola’s expert explains that the “micro-ingredient pumps connecting the QPM
modules and the dispensing section are positive displacement pumps, meaning
they simultaneous produce and control the flow, and therefore do not require
a valve.” 116 This statement is not dispositive as to whether the Freestyle
Dispenser contains a “dispensing section” within the specific meaning of the
claim language. However, it weighs in favor of denying summary judgment
because it shows that a reasonable jury could find that the Freestyle contains
a dispensing section.
iii. Valves
Next, Coca-Cola argues that the Freestyle Dispenser does not infringe
Claim 11 because it does not use “valves.”117 Claim 11 provides for a beverage
dispenser comprising “at least one valve coupling the at least one compartment
to a dispensing section configured to dispense the beverage.” 118 It further
requires that the controller actuate such valves “to control an amount of the
element to be dispensed.”119 The parties agreed at the claim construction stage
116
Wolski Expert Report [Doc. 138-20] ¶ 78.
117
Def.’s Mot. for Summ. J., at 23.
118
‘377 Patent 9:46-48.
119
Id. 9:59-61.
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that the term “valve” should be given its plain and ordinary meaning.120 CocaCola makes two arguments with regards to the “valve” element.
First, Coca-Cola argues that the micro-ingredients – the flavor
ingredients added to the mixture of carbonated water, water, and high fructose
corn syrup – are not dispensed by valves.121 Instead, according to Coca-Cola,
these elements of the beverage are dispended by pumps. 122 Wolski, CocaCola’s expert, explains that the Freestyle Dispenser uses “Quad Pump
Modules” (“QPMs”) to dispense precise amounts of micro-ingredients, and that
these QPMs are pumps, not valves.123 In his expert report, Wolski states that
the Freestyle does not use valves to “propel or control the flow of the microingredients or the non-nutritive sweetener.”124 He explains that the QPMs are
“are positive displacement pumps, meaning they simultaneous produce and
control the flow, and therefore do not require a valve.”125 He further opines
that the micro-ingredients will not flow at all unless the positive displacements
pumps are activated, unlike liquids requiring a valve, which would flow
120
Claim Construction Opinion and Order, at 1 n.1.
121
Def.’s Mot. for Summ. J., at 27.
122
Id.
123
Wolski Decl. [Doc. 138-31] ¶¶ 29, 31-32.
124
Wolski Expert Report [Doc. 138-20] ¶ 77.
125
Id. ¶ 78.
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unceasingly absent the use of a valve. 126 As an example of this difference,
Wolski compares the macro-ingredients, which use valves, with the microingredients, which use these positive displacement pumps.127
In contrast, Rothschild argues that the Freestyle Dispenser uses
“passive valves” to control the flow of the micro-ingredients. 128 Citing its
expert report, Rothschild contends that the Freestyle uses passive valves
similar to technology used in inkjet printers.129 Rothschild argues that the
micro-ingredients, which are contained in collapsible bladders within
cartridges, are controlled by the manipulation of relative pressures between
the bladder and the surrounding air.130 Curley, Rothschild’s expert, explains
that this technology is known as a “passive valve” in the inkjet field.131 With
this technology, a meniscus of the micro-ingredient fluid exists at the jet
orifice. 132 Negative pressure from the collapsible bladder, positive pressure
from the micropump, and capillarity are used to precisely manipulate the
126
Id.
127
Id. ¶ 79.
128
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 11.
129
Id. at 11-12.
130
Id. at 12.
131
Curley Rebuttal Report [Doc. 161-3] ¶ 37.
132
Id. ¶ 44.
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pressure of the meniscus of micro-ingredient fluid at the tip of the jet.133 This
manipulation of meniscus pressure from negative to positive results in a
controlled stream of droplets of micro-ingredient.134 Curley argues that this
“valving action” created by this use of pressure would be considered a “passive
valve” by a person of ordinary skill in the art.
The Court agrees that a question of fact for a jury to resolve exists as to
this issue. Rothschild has presented sufficient evidence, via its expert reports
and declarations, that an ordinary person of skill in the art would consider the
technology used by the Freestyle Dispenser to control the flow of the microingredients to be “valves.” Based upon Curley’s declarations and expert
reports, a reasonable jury could conclude that the “valving action” created by
the manipulation of positive and negative pressures constitutes a “valve”
within the meaning of the claim language. And, on the other hand, Coca-Cola
has provided evidence both criticizing Rothschild’s expert and providing an
opinion that the Freestyle uses positive displacement pump technology,
distinct from valve technology, which a person of ordinary skill in the art would
not consider to be a “valve.” This dispute of fact is appropriate for resolution
by a jury.135
133
Id.
134
Id.
Furthermore, Curley does not admit that a “valve” and a “pump”
are different, as Coca-Cola contends. See Def.’s Mot. for Summ. J., at 24.
Instead, in his deposition testimony, Curley explained that the meniscal valve,
which is self-closing, needs positive pressure to open. Curley Dep. [Doc. 13833
135
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Second, the Court agrees with Rothschild that a reasonable jury could
conclude that some of the macro-ingredients, which Coca-Cola admits are
dispensed by valves, are elements within the meaning of the claim. Claim 11
states that the beverage dispenser comprises, among other things, “at least one
compartment containing an element of a beverage” and “at least one valve
coupling the at least one compartment to a dispensing section configured to
dispense the beverage.”136 According to Coca-Cola, the valves used with the
macro-ingredients do not meet this limitation because these macro-ingredients
are not “elements” stored in a “compartment.”137 However, as explained above
with regard to the “mixing chamber” element, a reasonable jury could conclude
that the high fructose corn syrup is stored in a “compartment.” Even though
the bag-in-box container of high fructose corn syrup sits outside the casing of
the Freestyle Dispenser, it is still physically connected to the dispenser. A
reasonable jury could conclude that this is a “compartment” that “comprises”
part of the beverage dispenser. Thus, a jury could conclude that high fructose
corn syrup is an “element” of the beverage, that it is contained in a
“compartment” of the beverage dispenser, and that it is coupled to the
17], at 158:9-15. Micropumps provide this positive pressure. Id. at 158:11-14.
Essentially, he argues that the pump provides a means for opening and closing
the valve. Id. at 158:9-10, 158:21-23. This testimony does not concede that the
Freestyle uses a pump, as opposed to a “valve,” within the meaning of the claim
language.
136
‘377 Patent 9:44-48.
137
Def.’s Mot. for Summ. J., at 28.
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dispensing section by a valve. Therefore, Coca-Cola is not entitled to summary
judgment on this issue.
iv. “User Interface Module”
Next, Coca-Cola argues that the Freestyle Dispenser has no “user
interface module.” Claim 11 describes “a user interface module configured to
receive an[] identity of a user and an identifier of the beverage.”138 The Court
construed this to mean “a component of the beverage dispenser that enables
direct communication between a user and the dispenser.”139 In doing so, the
Court rejected Rothschild’s proposed construction that this claim language
means “a component that enables communication between a user and a
dispenser.” 140 The Court, in coming to this determination, noted that the
intrinsic evidence in the ‘377 Patent suggested that the user interface module
should physically be a part of the beverage dispenser.141
Coca-Cola argues that the Freestyle Dispenser does not meet this
requirement because users transmit their identity and beverage preferences to
the Freestyle Dispenser through the Freestyle Mobile Application (the
“Freestyle App”) on a cellular phone.142 According to Coca-Cola, this does not
138
‘377 Patent, 9:50-51.
139
Claim Construction Opinion and Order, at 14.
140
Id.
141
Id. at 13-14.
142
Def.’s Mot. for Summ. J., at 29-30.
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constitute “direct communication” as the Court’s claim construction envisions.
Instead of communicating directly with the Freestyle, according to Coca-Cola,
a user employs the Freestyle App on his or her cellular phone, which
communicates over the cellular telephone network, to Coca-Cola’s server, and
then to the Freestyle Dispenser. 143 Coca-Cola stresses that Rothschild’s
infringement allegations rely upon the use of the Freestyle App with the
Freestyle Dispenser.144 In the First Amended Complaint, Rothschild alleges:
that the Freestyle Dispenser “is equipped with cellular data cards or hard-line
network connection, allowing communication between the dispenser and
[Coca-Cola’s] network, including [Coca-Cola’s] servers”;145 that the Freestyle
Dispensers “are monitored by [Coca-Cola], and [Coca-Cola’s] servers are in
communication with each dispenser”;146 that Coca-Cola “makes and markets
the [Coca-Cola] Freestyle mobile application”;147 that “[t]he new ‘Create Your
Own Mix’ feature on the Freestyle app lets fans save custom combination using
Freestyle’s over 100 drink options”;148 that “[w]ith smartphone in hand, users
can scan the app at a participating machine, which will in turn pour their very
143
Id. at 30-31.
144
Id. at 29.
145
First Am. Compl. ¶ 15.
146
Id. ¶ 16.
147
Id. ¶ 18.
148
Id.
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own creations”;149 and that Coca-Cola’s “mobile app servers are in constant
communication with the Freestyle dispensers, and are capable of transmitting
and receiving user identifiers, as well as identifiers of a beverage.”150 Overall,
Rothschild alleges that this is a user interface module that enables
communication between a user and the dispenser.151
Rothschild argues that the Freestyle Dispenser meets the “user
interface module” element in multiple ways. First, Rothschild argues that the
Freestyle’s touchscreen module meets the “user interface module” element of
Claim 11.152 The Freestyle Dispenser utilizes a touchscreen surface called the
“Blister.”153 The Blister touchscreen surface displays a variety of drink choices
and allows a user to scroll through those choices in search of a desired
beverage. 154 Generally, a user is presented with a main menu containing
multiple icons representing groups of beverages, such as “Coca-Cola” or
“Sprite.” 155 After touching one of those icons, a user is presented with
149
Id.
150
Id. ¶ 19.
151
Id.
152
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 23-24.
153
Curley Expert Report [Doc. 161-1] ¶ 81.
154
Id. ¶ 83.
155
Id. ¶ 84.
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subgroups of beverage choices.156 For example, after touching the “Coca-Cola”
icon, a user is presented with more specific “Coca-Cola” options, such as regular
“Coca-Cola,” “Coca-Cola” with cherry, and so on.157 The Blister touchscreen
can also display a Quick Read code (a “QR Code”) that can be utilized with the
Freestyle App.158 A user can use the Freestyle App on his or her phone to scan
the QR Code. Thus, according to Rothschild, the Blister touchscreen
constitutes a form of direct communication between the user and the
dispenser.159
However, Rothschild’s argument takes the Court’s construction out of
context. Claim 11 describes a “user interface module” that receives an “identity
of a user and an identifier of the beverage.”160 The “user interface module”
requirement is not satisfied by any component that enables direct
communication between the user and the dispenser. Instead, the direct
communication
must
include
the
user’s
identity
and
the
beverage
identifiers.161 This is because the claim describes the module as configured to
receive an identity of a user and an identifier of the beverage. Rothschild has
156
Id.
157
Id.
158
Id. ¶ 85.
159
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 23-24.
160
‘377 Patent 9:50-51.
161
Id.
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not provided evidence that the Freestyle Dispenser permits a user to provide
his or her identity and beverage identifiers via the Blister touchscreen.
Instead, the evidence establishes that a user can use the touchscreen to choose
a drink from a pre-selected list of beverage options. This function does not meet
the “user interface module” element of Claim 11 because it does not
communicate an identity of the user and an identifier of the beverage.162 This
important distinction is highlighted by Rothschild’s infringement theory in the
First Amended Complaint. Rothschild’s theory of infringement relies upon the
use of the Freestyle Dispenser in conjunction with the Freestyle App, and not
just any use of the Freestyle Dispenser as a soda fountain.
Rothschild then argues that the claim language does not require that all
communications between the user and the dispenser be direct.163 This is true.
Such a reading would be overly restrictive. Nonetheless, Rothschild still must
show that there is some form of direct communication between the user and
the dispenser whereby the user communicates his or her identity and beverage
identifier. Here, Rothschild has not shown that a user can input his or her
identity and beverage identifier by utilizing the Blister touchscreen. Instead,
it has only shown that a user can select a pre-determined beverage, such as
Coca-Cola with vanilla, by scrolling through menu pages on the touchscreen.
Even assuming the ‘377 Patent allows for some forms of indirect
162
Id.
163
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 25.
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communication, Rothschild has not shown that it meets this construction of
the claim language. While physically touching the Freestyle’s touchscreen
interface is undoubtedly a form of “direct communication,” it is not the type of
direct communication that the ‘377 Patent envisions. The ‘377 Patent describes
a user interface module configured to receive the identity of the user and an
identifier of the beverage. 164 Rothschild has not shown that the Freestyle
Dispenser receives the identity of the user or the identifier of the beverage
through the touchscreen interface on the dispenser. Instead, Rothschild has
only shown that the touchscreen is used to select ordinary, pre-determined
drink options, such as Cherry Coca-Cola. The use of the Freestyle in this
manner is not the basis of Rothschild’s infringement allegations.
Rothschild then argues that communications over a cellular network
constitute “direct communication.” 165 According to Rothschild, a user can
communicate with the dispenser via the internet by using the Freestyle App
on a cellular telephone, and that this is a form of direct communication.166 In
support of this argument, Rothschild cites the report of Curley, its expert.167
In his report, Curley describes personally using the Freestyle App to dispense
a personalized beverage, discusses the development of this mobile application,
164
‘377 Patent 9:50-51.
165
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., 25-26.
166
Id. at 25.
167
Id.
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and concludes that this is direct communication. 168 Curley argues that
“[c]ellular communications are a form of direct communication.” 169 He
explains that “[i]f I call you on my cell phone, and you answer, we are speaking
directly. That is direct communication.” 170 However, even taking Curley’s
opinion into account, a reasonable jury would not be able to conclude that
communications over a cellular network to the dispenser are “direct.” As
explained in more detail below, the intrinsic evidence of the ‘377 Patent
supports the conclusion that communications that go through a cellular
network, to a server, and then to a dispenser are not “direct” communications.
Thus, given this language in the ‘377 Patent, a reasonable jury would not
conclude that cellular communications are direct based merely upon Curley’s
conclusory assertion that cellular communications are “direct.”
Curley also argues that there is no definition of “direct communication”
in the Claim Construction Opinion and Order, and that those of ordinary skill
in the art would understand “direct communication” to include cellular, WiFi,
and internet communications. 171 However, the Claim Construction Opinion
and Order does provide insight into the distinction between “direct” and other
forms of communication. In contrast to the user interface module, the ‘377
168
Curley Expert Report [Doc. 161-1] ¶¶ 99-124.
169
Curley Rebuttal Report [Doc. 138-18] ¶ 52.
170
Id.
171
Id.
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Patent describes the “communications module,” which enables communication
between the dispenser and a server over the network.172 The Court construed
“communication module” to mean a “component of the beverage dispenser that
enables communication between the dispenser and a server.”
173
This
communication to a server, which would be over a network of some kind, was
not construed by the Court to be “direct communication.” Thus, the distinction
between “direct communications” and other communications is apparent from
this construction. Communications over a network, such as those between the
“communication module” and a server on the network, are merely
“communications,” and not “direct communications.” Any other reading of this
would render the Court’s construction of a “direct communication” to be
superfluous, because any form of communication could then be considered
“direct.”
Rothschild also emphasizes certain language in the claim’s specification
and the Court’s Claim Construction Opinion and Order, arguing that “user
interface module” includes a broader spectrum of communications than CocaCola claims. In the Claim Construction Opinion and Order, the Court
concluded that “user interface module” should be defined as “a component of
the beverage dispenser that enables direct communication between a user and
172
‘377 Patent 9:52-58.
173
Claim Construction Opinion and Order, at 20-21.
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the dispenser.”174 In doing so, the Court noted that this is so because the user
interface module must “physically be a component of the beverage
dispenser.” 175 The Court also acknowledged certain broad language in the
specification.
The
specification
of
the
‘377
Patent
provides
that
communications with the user interface module “may be in the form of a
keyboard, magnetic reader, voice recognition, WiFiTM communication (b, d, g,
n, etc.), RFID communications, infrared communication, BluetoothTM, or any
other type of communication now known or practiced in the future that will
allow the user to identify themselves to the beverage dispenser.”176 From this,
Rothschild contends that any communication meets the claim element, as long
as the user interface module is physically part of the dispenser.177 Rothschild
also stresses the Court’s explanation in the Claim Construction Opinion and
Order that “[a]lthough this language is broad, it should be interpreted as
envisioning any possible form of communication between the user and the user
interface module which is physically part of the dispenser.”178
However, these arguments distort both the Court’s ruling and the
examples provided by the specification. The Court concluded that these
174
Claim Construction Opinion and Order, at 13-14.
175
Id. at 14.
176
‘377 Patent 7:43-49.
177
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 26-27.
178
Claim Construction Opinion and Order, at 16.
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communications must be direct because the user interface module must
physically be part of the beverage dispenser. The Court noted that this can
include any form communication that would allow a user to directly
communicate with a user interface module that is physically part of the
beverage dispenser. The Court did not conclude that any communications, no
matter how indirect, suffice as long as the user interface module is physically
part of the beverage dispenser. Instead, this was part of the reasoning for
concluding that the communications must be “direct.”
The language of the specification further supports this conclusion. When
taken out of context, the specification language quoted above seems to support
Rothschild’s contention that an interface module that uses any form of
communications technology imaginable would constitute a “user interface
module.” However, the context of this language shows that this is not true. The
specification explains that a user will communicate his or her identity and
beverage identifier to the user interface module of the beverage dispenser. The
dispenser then uses its communication module to communicate this identity to
the server to find beverage product preferences stored on the server. The server
then communicates this information back to the dispenser to dispense a
beverage based upon those preferences.
179
Unlike with this dispenser
envisioned by the specification, the Freestyle user provides his or her identity
first to the Freestyle App on his or her phone, not to the dispenser. The mobile
179
‘377 Patent 7:56-8;28
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application then communicates this information to the server, which then
communicates the user’s identity and beverage preferences, for the first time,
to the dispenser. Thus, this process is starkly different from the process
described in the specification.180
This distinction is further bolstered by other language in the
specification. The specification describes several ways that a user would
directly communicate his or her identity to the user interface module, which is
physically part of the dispenser. This identity can be communicated, for
example, by an RFID card, on a magnetic swipe card, or by a code that is
wirelessly transferred from a cellular phone or mobile device when such a
device “is within range of the dispenser.”
181
It then explains that
communications may be in the form of a keyboard, magnetic reader, voice
recognition, WiFi communication, RFID communication, Bluetooth, or any
other type of communication that may in the future be practiced. However,
given the previous descriptions of the user interface module, it becomes clear
that these are direct communications with the dispenser, and not
communications over the Internet, cellular network, or some other network.
The Court recognizes that it cannot read limitations into the
claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005). Here, however, the Court is not reading a limitation into Claim 11
from the preferred embodiments described in the specification. Instead, it is
explaining how Rothschild’s reliance on language from the specification in
support of its argument for a broader construction is misplaced.
180
181
‘377 Patent 7:31-38 (emphasis added).
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Thus, a user could use Bluetooth technology to communicate directly with the
dispenser, or a local WiFi network to communicate directly with it. However,
communications over the cellular network to a server would not be direct. This
conclusion is buttressed by the specification’s explanation that the
“communications module,” and not the “user interface module,” couples the
dispenser to the Internet.182 Contrary to Rothschild’s assertion, this language
in the patent does not support its argument that “direct communication”
includes any communication with a user interface module as long as that
module is physically part of the dispenser. 183 Thus, despite Rothschild’s
protestations, the Court’s construction of “user interface module” was correct.
Rothschild’s attempt to relitigate the Court’s claim construction ruling is
unpersuasive.
Furthermore, even if Rothschild were correct, its argument would still
fail. Rothschild contends that, under the Court’s construction of this phrase, it
182
‘377 Patent 6:57-60.
Curley, Rothschild’s expert, also describes the use of RFID
communications in the Freestyle Dispenser. See Curley Expert Report [Doc.
161-1], at ¶¶ 88-98. Rothschild does not rely upon the use of this RFID
technology as a means of infringement in its First Amended Complaint or in
its brief. Nonetheless, even if it did, the Court would find that the use of RFID
technology in the Freestyle Dispenser does not meet the “user interface
module” element of Claim 11. With this technology, a user has a special cup
with RFID tags embedded in the cup. Id. ¶¶ 89-90. The dispenser uses RFID
tracking capabilities to limit the amount of time between beverage refills, to
ensure that a user is entitled to a refill, to limit the number of refills a user can
have, and so on. Id. ¶¶ 91-92. Rothschild does not argue that the Freestyle uses
this RFID technology to associate a user and his or her beverage preferences
to the dispenser.
183
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only matters if the user interface module is physically part of the beverage
dispenser, and not whether there is direct communication with that user
interface module. However, even if this is true, Rothschild has not shown that
the Freestyle has a component, that is physically part of the dispenser, that
the user interacts with to input his or her identity and beverage preferences.
Instead, Rothschild has shown that the user interacts with the Freestyle App,
which then sends information over the cellular network to Coca-Cola’s servers,
which communicate the user’s product preferences to the dispenser. The
Freestyle App is not a physical component of the dispenser – it is part of the
user’s mobile phone. Moreover, the communication from the server to the
dispenser would most naturally be read to be via the dispenser’s
“communication module,” and not the user interface module. Therefore, this
argument is likewise unpersuasive.
Finally, Rothschild dedicates multiple pages of its brief arguing that the
word “direct” in the claim construction is not that important, and that CocaCola “belated[ly] and surreptitious[ly]” slipped the word “direct” into its
proposed claim construction at the last minute.
184
However, despite
Rothschild’s beliefs to the contrary, the Court was not “tricked” by Coca-Cola.
The Court came to its claim construction rulings by reviewing the arguments
made by the parties and the intrinsic and extrinsic evidence relating to the
‘377 Patent. Rothschild is obviously unhappy with the Court’s construction of
184
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 29-31.
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the phrase “user interface module.” And although Rothschild may have had a
colorable argument for including more indirect communications within the
gambit of this construction, the Court concluded that the construction proposed
by Coca-Cola was most appropriate based upon the intrinsic evidence in the
‘377 Patent. Therefore, since Rothschild has failed to show that the Freestyle
Dispenser contains a “user interface module,” Coca-Cola is entitled to
summary judgment as to infringement of Claim 11.185
B. Invalidity
Next, Coca-Cola moves for summary judgment as to the invalidity of the
‘377 Patent.186 Specifically, Coca-Cola argues that the ‘377 Patent is invalid as
anticipated by prior art, and that it is invalid as obvious. It also argues that
Rothschild’s expert is not qualified to provide an opinion as to invalidity. A
patent is presumed to be valid under 35 U.S.C. § 282.187 Furthermore, “[e]ach
claim of a patent (whether in independent, dependent, or multiple dependent
form) shall be presumed valid independently of the validity of other claims;
dependent or multiple dependent claims shall be presumed valid even though
Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1340 (Fed.
Cir. 2013) (“If any claim limitation is absent from the accused device, there is
no literal infringement as a matter of law.”).
185
186
Def.’s Mot. for Summ. J., at 31.
35 U.S.C. § 282(a); see also Dana Corp. v. Am. Axle & Mfg., Inc.,
279 F.3d 1372, 1375 (Fed. Cir. 2002).
187
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dependent upon an invalid claim.” 188 “[T]his presumption can only be
overcome by clear and convincing evidence of facts to the contrary.” 189
“Anticipation under 35 U.S.C. § 102 is a question of fact, while obviousness
under § 103 is a question of law based on underlying findings of fact.”190 The
Court addresses each of these in turn.
1. Invalid as Anticipated
Coca-Cola first argues that the ‘377 Patent is invalid as anticipated by
prior art. “A patent claim is anticipated if a single prior art reference expressly
or inherently discloses every limitation of the claim.” 191 “A patent claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.” 192
“Anticipation challenges under § 102 must focus only on the limitations
actually recited in the claims.”193 Whether a prior art reference discloses a
188
35 U.S.C. § 282(a).
189
Dana Corp., 279 F.3d at 1375.
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015) (citing Flo Healthcare Sols., LLC v. Kappos, 697 F.3d
190
1367, 1375 (Fed. Cir. 2012)).
191
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252
(Fed. Cir. 2014).
SRI Int’l v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir.
2008) (quoting Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
192
Cir. 1987)).
193
DDR Holdings, 773 F.3d at 1252.
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limitation is a question of fact.194
i. Rothschild’s Expert Opinion
First, Coca-Cola argues that Rothschild’s expert, Dr. Curley, has not
provided a proper expert rebuttal report in response to Coca-Cola’s expert
report on invalidity. Specifically, Coca-Cola contends that Curley’s analysis is
deficient because it does not provide a claim-by-claim analysis of
anticipation.195 Because of this, according to Coca-Cola, Rothschild has failed
to rebut Coca-Cola’s prima facie case of invalidity, and Coca-Cola is entitled to
summary judgment. Rothschild admits that its expert report does not contain
a claim-by-claim analysis, and instead argues that Coca-Cola confuses the
burden imposed on each party under this analysis. Rothschild contends that it
need only show that a genuine dispute of material fact exists as to whether a
single claim element is absent in the prior art. The Court agrees that
Rothschild is not obligated to provide a claim-by-claim analysis to defeat a
claim of invalidity.
The case that Coca-Cola relies upon for this proposition, Commissariat
à L’energie Atomique v. Samsung Electronics Co., does not conclude
otherwise. 196 In Commissariat, the court noted that the plaintiff “did not
194
Id.
195
Def.’s Mot. for Summ. J., at 34-36.
196
Commissariat à L’energie Atomique v. Samsung Elecs. Co., 524
F. Supp. 2d 520 (D. Del. 2007).
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directly respond to the element-by-element anticipation analysis presented in
Samsung’s opening brief” and instead made “several general arguments” as to
why the prior art did not anticipate the patent at issue in that case.197 The
court explained that the defendant bears the burden of establishing that each
element of the claims at issue are disclosed in the prior art, and went on to
review the defendant’s evidence as to each element, “whether or not [the
plaintiff] responded to [the defendant’s] evidence as to a particular element.”198
The court did not hold that a failure to provide a claim-by-claim rebuttal
analysis itself renders an expert report per se improper or inadmissible.
Instead, it found that the general arguments provided by the plaintiff in that
case were not persuasive due to the expert’s failure to provide a claim-by-claim
analysis. A defendant bears the burden of proof in establishing that each claim
is present in prior art. If it does provide evidence as to each element, then a
failure by the plaintiff to provide a claim-by-claim analysis would be generally
unpersuasive. Nonetheless, a defendant still bears the initial burden of proof
as to each claim. Therefore, the Court will analyze the arguments of the parties
to determine whether a genuine dispute of material fact exists as to the
presence of each element of Claim 11 in the prior art.
ii. Boland Prior Art
First, Coca-Cola argues that the ‘377 Patent is anticipated by U.S.
197
Id. at 526.
198
Id.
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Patent No. 7,762,181, issued to Michael John Boland on July 27, 2010 (the
“Boland Patent”). 199 This patent is titled “Customised nutritional food and
beverage dispensing system.” 200 The Boland Patent describes a dispensing
system that “is programmed to formulate a serving which best matches the
customized serving selected by the customer within constraints set by the
programming taking into account the inventory of ingredients and the health
profile of the customer.”
201
Coca-Cola argues that the Boland Patent
anticipates Claims 11, 12, and 21-23 of the ‘377 Patent.202 Specifically, CocaCola contends that Claim 1 of the Boland Patent anticipates “many elements”
of Claim 11.203
Claim 1 of the Boland Patent describes:
1.
A system for dispensing a customized nutritional serving
which comprises:
An ingredient storage module;
An ingredient processing module;
A serving dispenser;
A customer interface; and
A controller operatively linked to the customer interface
199
Def.’s Mot. for Summ. J., at 36.
200
Id.
201
Boland Patent [Doc. 138-23], at 2.
202
Def.’s Mot. for Summ. J., at 36.
203
Def.’s Mot. for Summ. J., at 37.
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and programmed to control the storage module, the
processing module and the serving dispenser;
The controller having stored in its memory an inventory of
ingredients in the storage module, their compositions and
their properties, and customer profile data;
The controller being programmed to operate in the
following manner:
When a customer selects a customized serving through the
customer interface, the controller:
a) looks up the information stored in its memory,
formulates a serving which best matches the customized
serving selected by the customer within predetermined
constraints set by its programming and presents a selected
serving to the customer for confirmation or modification;
b) if the customer modifies the selection, repeats step a) on
the modified selection, and presents the resulting selected
serving to the customer for confirmation or modification;
and
c) when the customer has confirmed a serving issues
instructions to the ingredient storage and processing
modules and the serving dispenser to prepare and dispense
the serving.204
Coca-Cola argues: that the “ingredient storage module” of the Boland Patent
anticipates Claim 11’s “compartment containing elements of a beverage”; that
Boland’s “ingredient processing module” anticipates Claim 11’s “mixing
chamber”; that “the serving dispenser” of the Boland Patent anticipates Claim
11’s “dispensing section”; and that the “controller” of the Boland Patent
204
Boland Patent 29:31-61.
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anticipates the “controller” of Claim 11.205
Rothschild, in response, contends that several elements of Claim 11 do
not appear in the Boland Patent. Specifically, Rothschild argues that the
Boland Patent does not disclose: (1) the “valve” element of Claim 11; (2) the
“identifier of the beverage” element of Claim 11; (3) the “communication
module” element of Claim 11; and (4) the “controller” element of Claim 11.206
The Court agrees that Coca-Cola has failed to show, by clear and convincing
evidence, that every limitation of Claim 11 is present in the Boland Patent.
Coca-Cola’s reply brief is telling – it focuses almost entirely on attacking the
credibility of Rothschild’s expert witness, and does not dispute Rothschild’s
contention that these elements are absent from the Boland Patent. In fact,
Coca-Cola fails to discuss, or even mention, many of the elements of Claim 11
in its prior art analysis. This alone strongly suggests that Coca-Cola has failed
to carry its burden as to invalidity. Coca-Cola’s assertion that “Claim 1 of
Boland anticipates many elements of Claim 11” highlights this failure.207
For example, Coca-Cola fails to show that the “valve” element of Claim
11 is present in Boland. Claim 11 describes “at least one valve coupling the at
least one compartment to a dispensing section configured to dispense the
205
Def.’s Mot. for Summ. J., at 38.
206
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 36-43.
207
Def.’s Mot. for Summ. J., at 37 (emphasis added).
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beverage.”208 Coca-Cola does not point to a limitation in the Boland Patent
describing the use of a valve. Moreover, Coca-Cola has failed to show that the
Boland Patent contains the “identifier of a beverage element.” Claim 11 states
that the user interface module of the claimed beverage dispenser is configured
to receive both the “identity of a user” as well as “an identifier of the beverage,”
which the communication module will transmit to a server in order to receive
user generated beverage product preferences. 209 Rothschild notes that this
distinction is important, because the Boland Patent employs solely user
profiles, and not beverage identifiers. 210 The machine described in Boland
takes information about a user and constructs a beverage based upon that
user’s health profile.211 Thus, it is very likely that a jury would conclude that
the Boland Patent does not have an “identifier of the beverage” element.
Coca-Cola primarily argues that Rothschild failed to meet its burden to
provide evidence as to the question of invalidity. Essentially, Coca-Cola argues
that, although it bears the initial burden of proof, this burden shifts to
Rothschild once it establishes a prima facie case of invalidity. However, CocaCola misunderstands the way this burden-shifting works. Although Rothschild
may in fact need to provide evidence to rebut a prima facie case of invalidity,
208
‘377 Patent 9:46-48.
209
‘377 Patent 9:50-58.
210
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 39.
211
Boland Patent 17:56-60.
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Coca-Cola must first establish its prima facie case of invalidity to cause this
burden-shifting. Here, Rothschild correctly points out that Coca-Cola has not
established this prima facie case. As explained above, Coca-Cola has failed to
show that several elements of Claim 11 were previously disclosed in the Boland
Patent. Since Coca-Cola needs to show that each element of the asserted claims
is present in prior art to establish invalidity by anticipation, it has failed to
establish its prima facie case. Thus, Rothschild is under no burden to provide
evidence. Finally, Coca-Cola has also failed to carry its burden of invalidity as
to Claims 12, and 21-23 of the ‘377 Patent. Coca-Cola provides cursory
arguments for why Claims 12, and 21-23 are anticipated by Boland.212 These
threadbare arguments do not show that Coca-Cola is entitled to summary
judgment on an issue for which it bears the burden of proof. Therefore, CocaCola is not entitled to summary judgment as to the invalidity by anticipation
of Claims 11, 12, and 21-23 of the ‘377 Patent.
2. Obviousness
Next, Coca-Cola argues that the ‘377 Patent is invalid as obvious. 213
Coca-Cola, relying upon its expert report, contends that eight prior art
references, “individually or in combination,” demonstrate that the ‘377 Patent
was obvious. A patent is invalid “if the differences between the claimed
invention and the prior art are such that the claimed invention as a whole
212
See Def.’s Mot. for Summ. J., at 39, 42.
213
Def.’s Mot. for Summ. J., at 43.
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would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to which the claimed
invention pertains.”214 The reason an obvious claim is invalid “is because its
differences over the prior art are simply not sufficient to warrant a patent
grant.”215 “The determination of obviousness under 35 U.S.C. § 103 is a legal
conclusion based on underlying facts.”216 The Defendant is required to prove
that the asserted claims are obvious by clear and convincing evidence.217
This underlying factual inquiry into obviousness is guided by the
Graham factors, which include: (1) the scope and content of the prior art, (2)
the differences between the prior art and the claimed invention, (3) the level of
ordinary skill in the art, and (4) any relevant secondary considerations. 218
Furthermore, “[w]hen determining whether a patent claiming a combination
of known elements would have been obvious, we ‘must ask whether the
improvement is more than the predictable use of prior art elements according
214
35 U.S.C. § 103.
215
Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1363
(Fed. Cir. 2005).
Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290 (Fed. Cir. 2013)
(citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
216
217
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015).
TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir.
2010) (citing Graham, 383 U.S. at 17-18).
218
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to their established functions.’”219 This inquiry usually involves “considering
the ‘interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.’”220
Rothschild
argues
that
Coca-Cola’s
obviousness
argument
is
“procedurally improper” because Coca-Cola “devoted one page to obviousness,
citing six different combinations of various prior art references with no
argument or analysis, instead incorporating by reference 329 pages of Dr.
Alexander’s appendices.”221 Rothschild contends that this is improper because
it forces the Court to sift through a voluminous amount of documents to
construct an argument on Coca-Cola’s behalf.222 The Court agrees. Coca-Cola’s
perfunctory argument does not present a legal or factual basis for why the ‘377
Patent is invalid as obvious. 223 Its citation to its expert report is not a
219
Id.
220
Id. (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
221
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 44.
222
Id.
223
See InTouch Techs., Inc. v. VGo Commc’ns, Inc., CV 11-9185 PA
(AJWx), 2012 WL 12903069, at *3 (C.D. Cal. Sept. 10, 2012) (“And rather than
present legal and factual argument in its Motion, Defendant often opts merely
to cite to the analysis of its experts and various prior art references, in hopes
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“persuasive or effective” strategy, especially given its “burden of proving
invalidity by clear and convincing evidence.”224
At a minimum, Coca-Cola’s
half-page argument fails to show that it is entitled to judgment as a matter of
law on an issue for which it bears the burden of proof. To be entitled to
summary judgment on the issue of obviousness, Coca-Cola would need to prove
that no rational jury could conclude that the ‘377 Patent is not invalid due to
obviousness. Coca-Cola’s cursory argument for obviousness fails to meet such
a high burden. Therefore, the Court concludes that Coca-Cola is not entitled to
summary judgment as to invalidity due to obviousness.
C. Willful Infringement
Finally, Coca-Cola moves for summary judgment as to Rothschild’s
claim for willful infringement. Section 285 of the Patent Act allows district
courts to award attorneys’ fees to prevailing parties in “exceptional cases.”225
The Supreme Court has provided that “[t]he subjective willfulness of a patent
infringer, intentional or knowing, may warrant enhanced damages, without
regard to whether his infringement was objectively reckless.”226 “Infringement
is willful when the infringer was aware of the asserted patent, but nonetheless
that the Court will connect the dots.”).
224
Id.
225
Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016)
(citing 35 U.S.C. § 285).
226
Id. at 1933.
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acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent.” 227 Whether infringement was willful is a
factual question.228 Since Coca-Cola is entitled to summary judgment on the
question of infringement, it is also entitled to summary judgment on the issue
of willfulness.
IV. Conclusion
For the reasons stated above, the Defendant’s Motion for Summary
Judgment of Non-Infringement and Invalidity [Doc. 138] is GRANTED as to
non-infringement of Claims 11, 12, 17, and 21-23, and DENIED as to the
invalidity of U.S. Patent No. 8,417,377.
SO ORDERED, this 23 day of April, 2019.
/s/Thomas W. Thrash
THOMAS W. THRASH, JR.
United States District Judge
i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 860 (Fed. Cir.
2010), aff'd, 564 U.S. 91 (2011) (internal quotations omitted).
227
228
Id. at 859.
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