Keurig, Incorporated v. JBR, Inc.

Filing 77

Judge F. Dennis Saylor, IV: ORDER entered. MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION.(Cicolini, Pietro)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
)
KEURIG, INC.,
)
)
Plaintiff,
)
)
v.
)
)
JBR, INC. d/b/a ROGERS FAMILY
)
COMPANY,
)
)
Defendant.
)
_______________________________________)

Civil Action No.
11-11941-FDS

MEMORANDUM AND ORDER ON
CLAIM CONSTRUCTION
SAYLOR, J.
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.
The parties’ allegations hinge in part on the construction of the claims in Keurig’s U.S.
Patent No. 7,165,488 (the “’488 patent”) and U.S. Patent No. 7,347,138 (the “’138 patent”).2
The Court conducted a Markman hearing on the construction of the relevant claims on January
29, 2013.
1

The cartridges for the brewer at issue can also be used for tea, hot chocolate, or other hot beverages. For
the sake of simplicity, the Court will generally use the term “coffee.”
2

A third patent held by Keurig also provides the basis for this suit, U.S. Patent No. D502, 362 (the “’362
patent”). However, that patent is a design patent and therefore contains no claim terms for the Court to construe.

Keurig and JBR dispute eight terms: (1) “cartridge” and “beverage cartridge” (the parties
agree that the two terms should have the same meaning); (2) “piercing;” (3) “inclined position;”
(4) “vertical position;” (5) “open position;” (6) “closed position;” (7) “resilient element;” and (8)
“handle.”
I.

Background
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.
The ’488 and ’138 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 ’488 patent at
issue in this suit are independent claim 22 and dependent claim 29. The claims of the ’138
patent at issue are independent claim 1 and dependent claim 18.
Claims 22 and 29 of the ’488 patent collectively read as follows:
22.

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.

29.

The method of claim 22, further comprising piercing the beverage cartridge with
an inlet probe when the lid is moved to the closed position.

2

Claims 1 and 18 of the ’138 patent collectively read:
1.

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
position.

18.

The apparatus of claim 1, further comprising a beverage cartridge that includes a
beverage medium and a filter element.

Keurig manufactures and licenses commercially available brewers and beverage
cartridges (branded as “K-Cups”) that allow users to accomplish the methods described in these
claims. JBR manufactures beverage cartridges (branded as “OneCups”) that can be used with
Keurig brewers to brew a single cup of coffee. At the heart of the dispute concerning the
construction of the claim terms is the issue of whether those claims cover the method of using a
JBR cartridge in conjunction with a Keurig brewer to brew a 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”

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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.
The parties contest the interpretation of eight separate terms used to describe the methods
in the claims recited above. The terms in dispute are: (1) “inclined position;” (2) “vertical
position;” (3) “open position;” (4) “closed position;” (5) “handle;” (6) “resilient element;” (7)
“cartridge” and “beverage cartridge” (the parties agree that the two terms should have the same
meaning); and (8) “piercing.”
On November 2, 2011, Keurig filed suit under 35 U.S.C. §100 et seq. against JBR for
infringement of the ’488, ’138, and ’362 patents. Specifically, Keurig contends that JBR has
infringed on claims 22 and 29 of the ’488 patent, claims 1 and 18 of the ’138 patent, and the
entirety of the ’382 patent.
II.

Legal Framework
The construction of claim terms is a question of law. Markman v. Westview Instruments,

517 U.S. 370, 372 (1996) (“[T]he construction of a patent, including terms of art within its claim,
is exclusively within the province of the court.”).
In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit
clarified the proper approach to claim construction and set forth principles for determining the
hierarchy and weight of the definitional sources that give the patent its meaning. The guiding
principle of construction is “the meaning that the term would have to a person of ordinary skill in
the art in question at the time of . . . the effective filing date of the patent application.” Id. at
1313. Courts thus seek clarification of meaning in “the words of the claims themselves, the

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remainder of the specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at
1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116
(Fed. Cir. 2004)).
A.

The Words of the Claims Themselves

The claim construction analysis normally begins with the claims themselves.3 The claims
of a patent “define the invention to which the patentee is entitled the right to exclude.” Id. at
1312 (citing Innova, 381 F.3d at 1115).
As a preliminary matter, it is well-established that a court may construe a claim term to
have its plain meaning when such a construction resolves a dispute between the parties. See O2
Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A
determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’
may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a
term’s ‘ordinary’ meaning does not resolve the parties’ dispute. . . when the "ordinary" meaning
of a term does not resolve the parties’ dispute . . . claim construction requires the court to
determine what claim scope is appropriate in the context of the patents-in-suit.”); Finjan Inc. v.

3

In Phillips, the Federal Circuit discredited the practice of starting the claim construction analysis with
broad definitions found in dictionaries and other extrinsic sources:
[I]f the district court starts with the broad dictionary definition . . . and fails to fully appreciate how
the specification implicitly limits that definition, the error will systematically cause the
construction of the claim to be unduly expansive. The risk of systematic overbreadth is greatly
reduced if the court instead focuses at the outset on how the patentee used the claim term in the
claims, specification, and prosecution history, rather than starting with a broad definition and
whittling it down.
Id. at 1321. Of course, if no special meaning is apparent after reviewing the intrinsic evidence, claim construction
might then “involve[] little more than the application of the widely accepted meaning of commonly understood
words.” Id. at 1314.

5

Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010); see also U.S. Surgical Corp.
v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of
resolution of disputed meanings and technical scope, to clarify and when necessary to explain
what the patentee covered by the claims, . . . [but] is not an obligatory exercise in redundancy.”).
In some instances, it is the arrangement of the disputed term in the claims that is
dispositive. “This court's cases provide numerous . . . examples in which the use of a term
within the claim provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314. For
example, because claim terms are normally used consistently throughout the patent, the meaning
of a term in one claim is likely the meaning of that same term in another. Id. In addition, “the
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.” Id. at 1315.
B.

The Specification

“The claims, of course, do not stand alone.” Id. at 1315. Rather, “they are part of a fully
integrated written instrument, consisting principally of a specification that concludes with the
claims.” Id. (internal citations and quotations omitted). For that reason, the specification must
always be consulted to determine a claim’s intended meaning. “[T]he specification is always
highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)).
“In general, the scope and outer boundary of claims is set by the patentee’s description of
his invention.” On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1338 (Fed. Cir.
2006); see also Phillips, 415 F.3d at 1315-1317 (“[T]he interpretation to be given a term can

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only be determined and confirmed with a full understanding of what the inventors actually
invented and intended to envelop with the claim”). “[T]he specification may reveal a special
definition given to a claim term by the patentee that differs from the meaning it would otherwise
possess.” Phillips, 415 F.3d at 1316. It may also reveal “an intentional disclaimer, or disavowal,
of claim scope by the inventor.” Id. Therefore, the claims are to be construed in a way that
makes them consistent with, and no broader than, the invention disclosed in the specification.
On Demand, 442 F.3d at 1340 (“[C]laims cannot be of broader scope than the invention that is
set forth in the specification.”); Phillips, 415 F.3d at 1316 (“[C]laims must be construed so as to
be consistent with the specification, of which they are a part.”).
Nevertheless, courts must be careful to “us[e] the specification [only] to interpret the
meaning of a claim” and not to “import[] limitations from the specification into the claim.”
Phillips, 415 F.3d at 1323; see also Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1375
(Fed. Cir. 2005) (internal quotations omitted). A patent’s “claims, not specification
embodiments, define the scope of patent protection.” Kara Tech. Inc. v. Stamps.com Inc., 582
F.3d 1341, 1348 (Fed. Cir. 2009); see also Martek Biosciences Corp. v. Nutrinova, Inc., 579
F.3d 1363, 1381 (Fed. Cir. 2009) (“[E]mbodiments appearing in the written description will not
be used to limit claim language that has broader effect.”). “In particular, we have expressly
rejected the contention that if a patent describes only a single embodiment, the claims of the
patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at 1323. This
is “because persons of ordinary skill in the art rarely would confine their definitions of terms to
the exact representations depicted in the embodiments.” Id.
Although this distinction “can be a difficult one to apply in practice[,] . . . . the line

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between construing terms and importing limitations can be discerned with reasonable certainty
and predictability if the court's focus remains on understanding how a person of ordinary skill in
the art would understand the claim terms.” Id. Ultimately, “[t]he construction that stays true to
the claim language and most naturally aligns with the patent's description of the invention will
be, in the end, the correct construction.” Id. at 1316 (citing Renishaw PLC v. Marposs Societa’
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
C.

The Prosecution History

After the specification and the claims themselves, the prosecution history is the next best
indicator of term meaning. The prosecution history consists of the complete record of the
proceedings before the PTO and includes the prior art cited during the examination of the patent.
Id. at 1317. “Like the specification, the prosecution history provides evidence of how the PTO
and the inventor understood the patent.” Id. “[T]he prosecution history can often inform the
meaning of the claim language by demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of prosecution, making the claim scope
narrower than it would otherwise be.” Id. (citing Vitronics, 90 F.3d at 1582-83).
However, “because the prosecution history represents an ongoing negotiation between
the PTO and the applicant, rather than the final product of that negotiation, it often lacks the
clarity of the specification and thus is less useful for claim construction purposes.” Id. As a
result, courts generally require that “a patent applicant [] clearly and unambiguously express
surrender of subject matter” to disavow claim scope during prosecution. Voda v. Cordis Corp.,
536 F.3d 1311, 1321 (Fed. Cir. 2008) (quoting Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375,
1378 (Fed. Cir. 2005)).

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D.

Extrinsic Sources

Extrinsic evidence consists of “all evidence external to the patent and prosecution
history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips,
415 F.3d at 1317. It “can help educate the court regarding the field of the invention and can help
the court determine what a person of ordinary skill in the art would understand claim terms to
mean.” Id. at 1319. However, extrinsic evidence suffers from a number of defects, including its
independence from the patent, potential bias, and varying relevance. Id. at 1318-19. Such
evidence is therefore “unlikely to result in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence,” and courts may consider, or reject, such
evidence at their discretion. Id. at 1319.
III.

Analysis
The proposed constructions of the disputed terms in the ’488 and ’138 patents are as

follows:

CLAIM TERM

KEURIG’S PROPOSED
CONSTRUCTION

JBR’S PROPOSED
CONSTRUCTION

“inclined position”

No construction necessary, or
“the receptacle position
wherein the center axis of the
receptacle deviates from the
vertical and horizontal”

“a receptacle position that allows
for convenient insertion and
removal of a beverage cartridge”

“vertical position”

No construction necessary, or
“upright position, pointing
directly overhead”

“a receptacle position in which the
receptacle does not allow access
for
insertion or removal of a beverage
cartridge”

9

“open position”

No construction necessary, or
“the position that allows a
beverage cartridge to be
conveniently inserted into and
removed from a receptacle”

“a position where a lid does not
cooperate with a receptacle and
thereby does not enclose a
cartridge
in the receptacle”
(for the ’488 patent)
“position a handle is in when a
receptacle allows access for
insertion and removal of a beverage
cartridge”
(for the ’138 patent)

“closed position”

No construction necessary, or
“the position in which the lid
and receptacle enclose the
cartridge for use”

“position a handle is in when a
receptacle does not allow access
for
insertion and removal of a beverage
cartridge”

“handle”

No construction necessary, or
“hand-movable part”

“the part of the apparatus designed
to be grasped by the hand”

“resilient element”

No construction necessary, or
“a deformable part that is
capable of recovering its shape”

“an element that provides yieldable
tactile resistance”

“cartridge” and
“beverage cartridge”

No construction necessary, or
“a container that holds a
beverage medium for use in a
single-serve brewer”

“an impermeable piercable
container internally subdivided by
a filter element into two
compartments, one of which
contains a dry beverage medium”

“piercing”

No construction necessary, or
“making a hole in or through”

“passing through”

(Joint Claim Const. St. at 2-5).
A.

“Inclined Position” and “Vertical Position”

Although the terms “inclined position” and “vertical position” appear in claims of both
the ’488 and ’138 patents, their use in claim 1 of the ’138 patent is typical:
[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 handle that is movable between open and closed positions to cause the
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receptacle to move between the vertical and inclined positions . . . .
U.S. Patent No. 7,347,138 at col. 4 ll. 15-18, 21-23 (filed Aug. 23, 2004) (emphasis added).
As mentioned above, the Court is not required to provide additional language construing
a claim if its ordinary meaning can be readily understood by a layperson and adopting it would
resolve the parties’ dispute concerning interpretation. See O2 Micro, 521 F.3d at 1361; see also
CardioFocus, Inc. v. Cardiogenesis Corp., 827 F. Supp. 2d 36, 41 (D. Mass. 2011) (holding that
when “claim terms do not implicate any special knowledge possessed by a person in the art and,
thus, should be given their ordinary meanings,” and the terms are not “ambiguous or
uncommon,” claim construction is not warranted); Finjan, 626 F.3d at 1206-07 (holding that the
district court did not err by not explicitly construing the term “addressed to a client” and relying
on its ordinary meaning); Phillips, 415 F.3d at 1314 (“In some cases, the ordinary meaning of
claim language as understood by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little more than the application of the
widely accepted meaning of commonly understood words.”).
Here, adopting the ordinary meanings of the terms “inclined position” and “vertical
position” would settle the interpretation dispute. The slightly more difficult issue is whether the
jury’s general understanding of the terms, without further interpretation by the Court, would
comport with their use in the claims or differ from the meanings given to the terms by those
skilled in the art. Accord Phillips, 415 F.3d at 1315-1317.
The terms “inclined position” and “vertical position” are not complicated. They are even
more easily understood in the context of the patents at issue, because they concern a relatively
simple apparatus, with few moving parts, that will likely be familiar to many of the jurors. The

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terms are used in the claims to describe the orientation of the receptacle when it is open and a
beverage cartridge is to be inserted, as opposed to when it is closed and the beverage is brewing.
The ordinary meanings of the terms accurately describe the tilted (in other words, “inclined”)
position of the open receptacle versus the straight up-and-down (in other words, “vertical”)
position of the closed receptacle. Accordingly, the Court will not construe the terms “inclined
position” and “vertical position” beyond attributing to them their ordinary meanings.
B.

“Open Position” and “Closed Position”

The terms “open position” and “closed position” appear in claims of both the ’488 and
’138 patents. Their use in claim 22 of the ’488 patent is as follows:
[M]oving 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 . . . .
U.S. Patent No. 7,165,488 at col. 5 ll. 1-13 (filed Dec. 12, 2003) (emphasis added). Their use in
claim 1 of the ’138 patent is as follows:
[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 position. . . .
U.S. Patent No. 7,347,138 at col. 4 ll. 21-25 (filed Aug. 23, 2004) (emphasis added).
Again, the Court is not required to provide additional language construing a claim if its
ordinary meaning can be readily understood by the jury and adopting it would resolve the
parties’ dispute concerning interpretation. See O2 Micro, 521 F.3d at 1361; see also

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CardioFocus, 827 F. Supp. 2d at 41; Finjan, 626 F.3d at 1206-07; Phillips, 415 F.3d at 1314.
As with the terms “inclined position” and “vertical position,” adopting the ordinary
meanings of the terms “open position” and “closed position” would settle the interpretation
dispute. Again, the question is whether the jury’s general understanding of the terms, without
further interpretation by the Court, would comport with their use in the claims or differ from the
meanings given to the terms by those skilled in the art. Accord Phillips, 415 F.3d at 1315-1317.
JBR contends that claim construction is necessary because claim 22 of the ’488 patent
uses the terms to describe the position of the handle, while claim 1 of the ’138 patent uses the
terms to describe the position of the lid, which could confuse the jurors’ understanding of the
terms. JBR proposes separate definitions for the terms as they are used in the two patents. Such
an argument runs counter to basic principles of claim differentiation. More importantly, defining
the terms differently for the purposes of the two patents would unnecessarily add to the
likelihood of juror confusion. The terms “open position” and “closed position” are not
complicated and are used in substantially the same way in both patents, regardless of whether
they are referring to the position of the handle or the lid—two pieces which are, not
coincidentally, attached to one another. Any potential for confusion is remedied by the fact that
the patents concern a relatively simple apparatus. The terms are used in the claims to describe
when the apparatus is open (and a beverage cartridge is to be inserted) as opposed to when it is
closed (and the beverage is brewing). The ordinary meanings of the terms accurately describe
the open and closed conditions of the apparatus. Accordingly, the Court will not construe the
terms “open position” and “closed position” beyond attributing to them their ordinary meanings.

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C.

“Handle”

Although the term “handle” appears in claims of both the ’488 and ’138 patents, its use in
claim 1 of the ’138 patent is typical:
[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 position.
U.S. Patent No. 7,347,138 at col. 4 ll. 21-27 (filed Aug. 23, 2004) (emphasis added).
Again, the Court is not required to provide additional language construing a claim if its
ordinary meaning can be readily understood by the jury and adopting it would resolve the
parties’ dispute concerning interpretation. See O2 Micro, 521 F.3d at 1361; see also
CardioFocus, 827 F. Supp. 2d at 41; Finjan, 626 F.3d at 1206-07; Phillips, 415 F.3d at 1314.
Again, adopting the ordinary meaning of the term “handle” would settle the interpretation
dispute. Here, this very common term is used to describe an apparatus that clearly has only one
part that possibly could be interpreted as a handle. In such a situation, there is very little concern
that the jury’s general understanding of the term, without further interpretation by the Court,
would not comport with its use in the claims or differ from the meaning given to it by those
skilled in the art. Accord Phillips, 415 F.3d at 1315-1317. The ordinary meaning of the term
will undoubtedly lead a reasonable juror to perceive the part described in the claim as the
“handle.” Accordingly, the Court will not construe the term “handle” beyond attributing to it its
ordinary meaning.
D.

“Resilient Element”

The term “resilient element” appears in claim 1 of the ’138 patent and is used as follows:
[A]t least one resilient element arranged to resiliently hold the handle in the closed
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position, wherein the at least one resilient element remains deflected when the handle is
in the closed position.
U.S. Patent No. 7,347,138 at col. 4 ll. 25-27 (filed Aug. 23, 2004) (emphasis added).
The parties agree that the term describes the element “providing an ‘over the center’
yieldable tactile resistance” to indicate when the brewer is in the closed position. U.S. Patent
No. 7,347,138 at col. 3 ll. 51-53 (filed Aug. 23, 2004). The disagreement concerns whether the
resilient element by its nature provides such “yieldable tactile resistance” or whether the resilient
element is merely one part of a system that provides “yieldable tactile resistance,” and
consequently has a separate independent definition.
JBR contends that a “resilient element” is by definition “an element that provides
yieldable tactile resistance.” As support for this position, JBR relies almost entirely on the short
quotation from the specifications of the ’138 patent, which the Court cited above. See U.S.
Patent No. 7,347,138 at col. 3 ll. 51-53 (filed Aug. 23, 2004).
Keurig, on the other hand, contends that a “resilient element” alone does not by definition
provide yieldable tactile resistance. Keurig contends that it is the interaction between the
resilient element and the other parts that creates the resistance. As support for this position, it
cites to the context surrounding the quote relied upon by JBR. The full paragraph from the
specification of the ’138 patent provides:
Frame 26 includes resilient elements 50 configured and arranged to coact with the
crank arms 42 in providing an "over the center" yieldable tactile resistance to pivotal
movement of the handle 40 between its open and closed positions. More particularly, and
with reference to FIGS. 10a-10d, which coincide respectively with FIGS. 6-9, it will be
seen that the crank arms 42 pivot together with handle 40 about axis Aa. At the position
shown in FIGS. S and 10c, corners 42a of the crank arms contact and downwardly
deflect resilient elements 50 through an initial distance d1, thus providing tactile
resistance to continued handle movement. When the lid is finally closed, and as shown
in FIG. 10d, the flat bottoms 42b of the crank arms rest against the upper edges of the
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resilient elements, the latter having sprung back slightly but remaining downwardly
deflected by a reduced distance d2. The handle 40 is thus resiliently held downwardly in
its closed position, thus providing a positive indication of chamber closure.
U.S. Patent No. 7,347,138 at col. 3 ll. 50-67 (filed Aug. 23, 2004) (emphasis added).
Keurig thus contends that no interpretation of the term beyond its plain meaning is
necessary. In the alternative, it contends that the term should be interpreted as “a deformable
part that is capable of recovering its shape.” As support for this position, Keurig refers to the
accepted definition of the term “resilience,” both in common and trade usage, citing Webster’s
Dictionary and the Federal Circuit’s description in Transclean Corp. v. Bridgewood Servs., Inc.
290 F.3d 1364, 1374–75 (Fed. Cir. 2002) (“Dictionaries, both general and technical, define the
adjective ‘resilient’ or its noun form ‘resilience’ as encompassing that which returns to its
original shape following a deformation in shape.”).
Unlike the terms discussed above, this term is not as easily understandable and its
meaning is not well-known. Thus, there is potential to confuse the jury if the term is not
construed.
JBR’s proposed definition is contrary to the language of the specification it relies on for
support. Nonetheless, the Court must still determine whether Keurig’s proposed definition
comports with the claims and abides by the principles of claim construction.
According to those principles, the Court first looks to the ordinary meaning of the term
and how it is used in the claims; if this provides a “firm basis for construing the term,” then the
inquiry is over. Phillips, 415 F.3d at 1313. Here, the language of the claims provides guidance
as to what is meant by the term “resilient element.” By the language of claim 1 of the ’138
patent, the “resilient element” works to “hold the handle in the closed position” by “remaining

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deflected when the handle is in the closed position.” U.S. Patent No. 7,347,138 at col. 4 ll. 25-27
(filed Aug. 23, 2004). “Deflected” in this context clearly signifies a “deformation in shape” of
the type referred to in Keurig’s proposed definition. It is sufficiently clear from the claim terms
that a “resilient element” is used to refer to “a deformable part that is capable of recovering its
shape.” Accordingly, the Court will adopt Keurig’s proposed definition.
Furthermore, the specification also supports Keurig’s proposed definition. The
specification sets forth a series of figures—referred to in the above-quoted passage as “10a10d”—that quite clearly show the resilient element becoming deformed by the crank arm
movement and then subsequently recovering its shape. See U.S. Patent No. 7,347,138 at FIG.
10a-10d (filed Aug. 23, 2004). The Court therefore interprets the term “resilient element” to
mean “a deformable part that is capable of recovering its shape.”
E.

“Cartridge” and “Beverage Cartridge”4

Although the term “cartridge,” or “beverage cartridge,” appears in claims of both the
’488 and ’138 patents, its use in claim 22 of the ’488 patent is typical:
[M]oving 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 . . .
U.S. Patent No. 7,165,488 at col. 5 ll. 1-13 (filed Dec. 12, 2003) (emphasis added).
The parties agree that the term describes a “container” that “holds,” or “contains,” a

4

As noted, the parties have agreed to that these terms should be construed to have the same meaning.

17

“beverage medium” and is used with a single-serve brewer. The disagreement concerns whether
the term, as used in the claims, is further limited to a subset of containers that also have the
attributes described in JBR’s proposed definition, or encompasses all containers that hold a
beverage medium for use in single-serving brewers.
JBR contends that the term “cartridge” has a specific meaning in the claims, such that the
term refers to a container that (1) is pierceable, (2) is internally subdivided by a filter element,
and (3) contains a beverage medium.5 JBR proposes to define the term as “an impermeable
piercable container internally subdivided by a filter element into two compartments, one of
which contains a dry beverage medium.” As support for this position, JBR cites to language in
claims 14, 16, 17, and 29 of the ’488 patent and claims 15, 17, and 18 of the ’138 patent. JBR
also refers to U.S. Patent No. 5,840,189 (filed Aug. 20, 1997) (the “’189 patent”), which teaches
a beverage cartridge and is incorporated by reference in the ’488 and ’138 patents.
Keurig maintains that the term should simply be given its plain meaning, or at least not
be further limited beyond the agreed-upon general description of a “container that holds a
beverage medium for use in a single-serve brewer.” Keurig contends that construing the term
narrowly, as proposed by JBR, would be impermissibly limiting the term to one preferred
embodiment from the patents’ specifications. Furthermore, Keurig contends that JBR’s
proposed construction would render claim 30 of the ’488 patent superfluous, and, therefore, runs
contrary to the doctrine of claim differentiation.
As noted above, the Court must first look to the ordinary meaning of the term and how it
is used in the claims; if this provides a “firm basis for construing the term,” then the inquiry is
5

Because the parties agree as to the third element (containing a beverage medium), the Court will focus its
discussion on the first two proposed elements.

18

over. Phillips, 415 F.3d at 1313. The term “beverage cartridge” does not have a well-defined
ordinary meaning outside the scope of these patent claims. Here, the language of the claims also
provides little guidance as to whether a “cartridge” is by definition limited to a container that is
“pierceable” and “internally subdivided.” Some of the dependent claims do indeed refer to a
cartridge being “pierced,” but others do not. For example, claim 15 of the ’138 patent, which is
dependent on claim 1, refers to “an inlet probe that is arranged to pierce a beverage cartridge.”
U.S. Patent No. 7,347,138 at col. 5 ll. 1-5 (filed Aug. 23, 2004). However, claim 1 itself makes
no reference to “piercing” a cartridge. See id. at col. 4 ll. 12-27. This suggests only that some
“cartridges” are pierceable, but does not clearly indicate that “pierceability” is a definitional
element. As to the “internal subdivision” by a “filter element,” again the limiting characteristics
appear only in dependent claims. Compare id. at col. 5 ll. 11-13 with id. at col. 4 ll. 12-27.
Furthermore, claim 30 of the ’488 patent, which is dependent on claim 22, teaches “[t]he
method of claim 22, wherein the beverage cartridge includes a beverage medium and a filter
element.” U.S. Patent No. 7,165,488 at col. 6 ll. 8-9 (filed Dec. 12, 2003). The doctrine of claim
differentiation thus dictates that “internal subdivision” by a “filter element” cannot be a
definitional characteristic of a “beverage cartridge.” Under that doctrine, "the presence of a
dependent claim that adds a particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." Phillips, 415 F.3d at 1315. If the independent
claim contained all of the same requirements as the dependent claim, it would be as narrow as
the dependent claim and the separate dependent claim would serve no purpose. Here, claim 30
would be rendered superfluous if a “cartridge” by definition included a “filter element.”
Accordingly, the Court finds that the term “cartridge” does not necessarily require an “internal

19

subdivision” by a “filter element.”
Having determined that the claim language does not provide a “firm basis” for
completely defining the term, the Court looks next to the specifications. Indeed, the
specifications do incorporate the ’189 patent by reference. However, in doing so, the
specifications are explicitly disclosing a preferred embodiment, not defining a claim term. See
U.S. Patent No. 7,347,138 at col. 2 ll. 43-49 (filed Aug. 23, 2004) (“The cartridge 24 is
preferably of the type disclosed, for example, in U. S. Pat. No. 5, 840, 189, the description of
which is herein incorporated by reference.”) (emphasis added). It is a fundamental principle of
claim construction that courts do not “import[] limitations from the specification into the claim.”
Phillips, 415 F.3d at 1323; see also Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1375
(Fed. Cir. 2005) (internal quotations omitted). “In particular, [the Federal Circuit] ha[s]
expressly rejected the contention that if a patent describes only a single embodiment, the claims
of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at
1323. Accordingly, the Court will not adopt JBR’s proposed definition on the basis of the
above-cited language incorporating the ’189
patent by reference.
The Court finds that Keurig’s definition, which is limited to the agreed-upon basic
elements of a “beverage cartridge,” better comports the term’s usage in the claims. Accordingly,
the court will interpret the term “cartridge,” or “beverage cartridge,” to mean “a container that
holds a beverage medium for use in a single-serve brewer.”
F.

“Piercing”

Although the term “piercing” appears in claims of both the ’488 and ’138 patents, its use

20

in claim 29 of the ’488 patent is typical:
The method of claim 22, further comprising piercing the beverage cartridge with an inlet
probe when the lid is moved to the closed position.
U.S. Patent No. 7,165,488 at col. 6 ll. 5-7 (filed Dec. 12, 2003) (emphasis added).
Unlike some of the terms discussed above, simply adopting the ordinary meaning of the
term “piercing,” without further explanation, would not necessarily settle the interpretation
dispute. See O2 Micro, 521 F.3d at 1361; Finjan, 626 F.3d at 1206-07. Indeed, both parties
purport to rely on the ordinary, dictionary definition of the word as the basis for their proposals.
Standard dictionary definitions of the word “pierce” include at least two alternatives: (1) to
make a hole in something (in other words, to puncture something) or (2) to pass through
something (in other words, to penetrate something). JBR maintains that “piercing” means only
“passing through” something and does not require puncturing; Keurig maintains that it means
“making a hole in or through” and, therefore, puncturing is required.6 Nonetheless, the parties
seem to agree that “[t]he purpose of piercing the beverage cartridge is to get the hot water into
the beverage cartridge to make a beverage.” (Markman Hrg. Tr. at 24:4-7). With that purpose in
mind, the Court will look first to the claim terms, and then to the specifications, to determine
how the term is used in the claims.
The words of the claims themselves provide little guidance as to whether “piercing”
requires puncturing the cartridge, or includes both the alternatives of an initial puncture and a

6

To illustrate this distinction at oral argument the parties offered competing examples of “piercing” from
everyday life. Counsel for Keurig suggested that a woman gets her ears “pierced” only one time and that “each
morning when she puts on her earrings and passes the hoop through her ear, she's not piercing them all over again.”
(Markman Hrg. Tr. at 22:3-7). Counsel for JBR, on the other hand, suggested that when one pushes a straw through
the top of a plastic cup that already has a hole in it, one is “piercing the lid as [one is] making the way through” and
is “penetrating it” but not “puncturing it. . . not making a hole.” (Markman Hrg. Tr. 24:24 - 25:4).

21

simple passing through an existing hole. The claims merely describe an inlet probe as the
mechanism that accomplishes the “piercing.” See, e.g., U.S. Patent No. 7,165,488 at col. 6 ll.
5-7. An inlet probe could be capable of passing through something without puncturing it.
Therefore, neither proposed definition of the term would render the claims nonsensical.
The figures in the specification, however, provide helpful guidance as to the term’s
meaning. Figure 6 of the ’488 patent clearly depicts the inlet probe as a sharp, rather than blunt,
instrument protruding out from the canister lid. It is hard to imagine another purpose for this
instrument except that of puncturing the top of a beverage cartridge in order to make a hole in it.
Indeed, if any kind of cartridge with a cover were to be placed in the machine, it would
necessarily be punctured. Because the agreed purpose of this probe is to deposit hot water into
the cartridge by “piercing” it—that is, puncturing it—the specification should be fairly read to
indicate that “piercing” requires a puncture.7
The Court also notes that JBR appears to be attempting to expand the scope of the term in
an attempt to bolster its patent-exhaustion and permissible-repair defenses. If the Court were to
find that “piercing” includes passing through an existing hole, without puncturing, the reusable
cartridges would all be rendered infringing uses, thereby eliminating one of Keurig’s chief
arguments that the patent is not exhausted due to the existence of “reasonable non-infringing
uses.” The Federal Circuit has cautioned against “speculative and convoluted reading of the
claim language,” particularly when it is suggested by counsel “retained to offer creative
arguments in infringement litigation.” Dayco Prods. v. Total Containment, Inc., 258 F.3d 1317,
7

The ’488 patent specification also cross-references various patents covering “known brew chambers for
single serve beverage brewers” in which “disposable beverage filter cartridge[s] [are] pierced . . . to accommodate a
through flow of metered hot water.” ’488 patent at 1:11–15. As Keurig notes, those patents describe puncturing of
cartridges, not a mere passing through of an inlet probe.

22

1324 (Fed. Cir. 2001). Here, the term “piercing,” as used in the patent, requires actually making
a hole in something (in other words, puncturing it), not simply passing through an existing hole.
Accordingly, the Court will interpret the term “piercing” to mean “making a whole in or
through.”
IV.

Conclusion

For the foregoing reasons, the disputed claim terms are construed as follows:
1.

the terms “inclined position,” “vertical position,” “open position,” “closed
position,” and “handle” have their ordinary meaning and need not be given
special construction by the Court;

2.

the term “resilient element” means “a deformable part that is capable of
recovering its shape”;

3.

the term “cartridge,” or “beverage cartridge,” means “a container that holds a
beverage medium for use in a single-serve brewer”; and

4.

the term “piercing” means “making a hole in or through.”

So Ordered.

/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge
Dated: March 22, 2013

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