DCT

9:23-cv-81246

Duvall Espresso IP Enforcement LLC v. Decent Espresso LLC

Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 9:23-cv-81246, S.D. Fla., 12/05/2025
  • Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim occurred in the district, including shipments of at least 15 Accused Products to residents within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s espresso machines infringe three U.S. patents related to systems and methods for precisely controlling the temperature of water used in brewing infused beverages.
  • Technical Context: The technology at issue involves high-precision beverage brewing systems that mix heated and non-heated water streams to achieve dynamic and accurate temperature profiles during the brewing process.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendants with pre-suit notice of infringement of the application that issued as the ’456 Patent on June 3, 2020. It further states that Defendants filed petitions for inter partes review (IPR) against all three asserted patents, and that the Patent Trial and Appeal Board (PTAB) denied institution for each petition, finding that Defendants failed to demonstrate a reasonable likelihood of prevailing. Plaintiff has also disclaimed claims 11-16 of the ’456 Patent.

Case Timeline

Date Event
2012-08-16 Priority Date for ’456, ’524, and ’271 Patents
2020-06-03 Pre-suit notice letter regarding ’456 Patent sent to Defendants
2020-09-15 U.S. Patent No. 10,772,456 Issued
2023-02-14 U.S. Patent No. 11,576,524 Issued
2024-04-16 U.S. Patent No. 11,957,271 Issued
2025-12-05 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,772,456 - "Device and System for Brewing Infused Beverages"

The Invention Explained

  • Problem Addressed: The patent’s background section describes that in conventional brewing systems, key variables like infusion temperature, pressure, and flow rate are interdependent, making it difficult to optimize and consistently reproduce a beverage’s flavor profile ('456 Patent, col. 1:49-62). Modifying one variable, such as pressure, unintentionally alters others, like flow rate, preventing independent control ('456 Patent, col. 1:53-58).
  • The Patented Solution: The invention proposes a system that enables precise temperature control by using two separate solvent conduits—one for heated solvent and one for unheated solvent—that are combined downstream to create a "resulting solvent" at a desired intermediate temperature ('456 Patent, col. 18:1-24). A key component is a "resulting solvent valve" located before the brewing chamber, which can divert the mixed solvent to a "removal conduit" (e.g., back to the heater or to a drain) until the solvent reaches the exact target temperature, at which point the valve directs the flow to the brewing chamber ('456 Patent, col. 18:25-41; Fig. 3).
  • Technical Importance: This approach decouples temperature control from flow rate and pressure, allowing a brewer to deliver water at a precise, dynamically-adjusted temperature profile throughout the infusion process ('456 Patent, col. 2:1-25).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶63).
  • Essential elements of claim 1 include:
    • A solvent flow management system with at least one pump to induce flow through a first (heated) and a second (unheated) solvent conduit.
    • A solvent temperature modulation system to heat the solvent in the first conduit.
    • The first and second conduits are directly coupled to form a "conduit joint" and a "resulting solvent conduit."
    • A brewing chamber for housing a solute (e.g., coffee grounds).
    • A "resulting solvent valve" disposed between the conduit joint and the brewing chamber.
    • The valve is configured to have a closed state and an active state, where the active state includes a first path to a "removal conduit" (bypassing the brewing chamber) and a second path to the brewing chamber, thereby enabling delivery of solvent at a desired temperature.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’456 Patent.

U.S. Patent No. 11,576,524 - "Device and System for Brewing Infused Beverages"

The Invention Explained

  • Problem Addressed: The patent addresses the same problem as the ’456 Patent: the lack of independent and dynamic control over brewing variables in conventional systems, which leads to inconsistent beverage quality (’524 Patent, col. 1:26-col. 2:45).
  • The Patented Solution: This invention describes a similar dual-conduit system but focuses on the use of two separate solvent pumps, one for each conduit, coupled to an electronic controller (’524 Patent, Abstract). The controller modulates the flow rate from each pump—one supplying a solvent and the other "another solvent, separate from the solvent"—to precisely mix them and achieve a desired temperature and flow rate in the resulting mixture that is delivered to the brewing chamber (’524 Patent, col. 17:56-col. 18:20).
  • Technical Importance: The use of two independently controlled pumps provides a mechanism for dynamic, real-time adjustment of both the final temperature (by altering the mixing ratio) and the total flow rate (by altering the combined pump speeds) (’524 Patent, col. 10:2-9).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶63).
  • Essential elements of claim 1 include:
    • A solvent flow management system with a first solvent pump for a first solvent conduit and a second solvent pump for a second solvent conduit.
    • The second pump is configured to receive "another solvent, separate from the solvent" received by the first pump.
    • A solvent temperature modulation system with at least one thermal modulator.
    • The conduits are coupled to form a "resulting solvent conduit" downstream of the modulator.
    • A brewing chamber and an outlet.
    • An electronic controller coupled to the pumps and modulator, configured to modulate the flow of both solvents.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’524 Patent.

U.S. Patent No. 11,957,271 - "Method of generating a desired temperature of an infused beverage within a brewing assembly"

  • Technology Synopsis: This patent claims a method for achieving a precise beverage temperature. The method comprises inducing separate flows of a first solvent (e.g., unheated) and a second solvent (heated to a higher temperature), then selectively combining them to form a resulting solvent at a desired temperature that is lower than the heated solvent's temperature before delivering it to the brewing chamber (’271 Patent, Abstract).
  • Asserted Claims: The complaint asserts dependent claims 5 and 9 (Compl. ¶63).
  • Accused Features: The complaint alleges that the Accused Products, by using their dual-pump system to mix hot and cold water to a target temperature, perform the steps of the claimed method (Compl. ¶¶ 52-53, 72). The complaint provides an annotated diagram illustrating how the Accused Products allegedly perform the steps of independent claim 1 (Compl. p. 13).

III. The Accused Instrumentality

Product Identification

  • The DE1PRO, DE1XL, and DE1XXL espresso machines, which the complaint states operate using a common "DE1+ architecture" (Compl. ¶¶ 44-45).

Functionality and Market Context

  • The complaint alleges the Accused Products are espresso machines that contain a specific plumbing and valve configuration for heating and directing water flow (Compl. ¶45). Based on a diagram allegedly obtained from Defendants, the system uses two pumps: a "hot water pump" connected to a water heater and a "cold water pump" (Compl. ¶¶ 48, 51). The complaint asserts these two separate conduits are merged at a "mixing manifold" to create brew water at a precise temperature, which is then directed to the "grouphead" or brewing chamber (Compl. ¶¶ 49, 51). An annotated diagram in the complaint illustrates this alleged architecture. (Compl. p. 12).
  • The complaint alleges Defendants market these as high-end espresso and coffee-related products, with sales to Florida residents generating over $134,000 (Compl. ¶16).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,772,456 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a solvent flow management system (SFMS) with at least one solvent pump operably configured to receive a solvent and induce a flow of the solvent through a first solvent conduit and a second solvent conduit The Accused Products contain a "hot water pump" and a "cold water pump" that induce the flow of water through separate conduits. ¶51; p. 12 col. 9:10-25
a solvent temperature modulation system (STMS) ... operably configured to thermally modulate the solvent disposed within the first solvent conduit to a raised temperature The Accused Products include a "water heater" in the hot water path that heats the solvent. ¶51; p. 12 col. 9:41-45
the first and second solvent conduits directly coupled together to form a conduit joint downstream of the solvent temperature modulation system to form a resulting solvent conduit The conduits from the hot water pump and cold water pump are shown merging at a "mixing manifold," which serves as the conduit joint. ¶51; p. 12 col. 10:14-21
a brewing chamber in fluid communication with the resulting solvent conduit and for housing a solute The "grouphead" of the Accused Products receives the mixed water and is designed to hold a portafilter with coffee grounds. ¶49; p. 12 col. 10:10-16
a resulting solvent valve disposed upstream of the brewing chamber, downstream of the conduit joint ... operably configured to selectively have a closed state ... and an active state that includes a first selective directional flow path directing the flow ... to a removal conduit ... and a second selective directional flow path directing the flow ... to the brewing chamber The complaint alleges a valve system before the grouphead selectively controls whether incoming solvent is directed toward or away from the grouphead. ¶49; p. 12 col. 18:25-41

U.S. Patent No. 11,576,524 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a solvent flow management system with a first solvent pump fluidly coupled to a first solvent conduit and ... a second solvent pump fluidly coupled to a second solvent conduit The Accused Products' architecture diagram explicitly depicts two pumps, labeled "cold water pump" and "hot water pump," each connected to a separate conduit. ¶51; p. 12 col. 9:26-32
operably configured to receive another solvent, separate from the solvent operably configured to be received within the first solvent pump The complaint alleges the two pumps draw water and direct it through separate heated and unheated paths before mixing. ¶51; p. 12 col. 17:64-67
a solvent temperature modulation system with at least one thermal modulator in fluid communication with the first solvent conduit The "hot water pump" is connected through a conduit to a "water heater" which acts as the thermal modulator. ¶51; p. 12 col. 9:41-54
an electronic controller communicatively coupled to the first and second solvent pumps and the at least one thermal modulator, and operably configured to modulate the flow of the solvent through the first solvent pump The complaint alleges the assembly uses electronics to control the pumps and water heater to control flow and temperature. ¶51 col. 10:2-9

Identified Points of Contention

  • Scope Questions: The infringement reading for the ’456 Patent hinges on whether the valve system in the Accused Products performs the specific dual-function diversion recited in claim 1 (i.e., directing flow to a "removal conduit" vs. the "brewing chamber"). A central question will be whether simply stopping flow or recirculating it within a manifold constitutes directing it to a "removal conduit" as defined by the patent.
  • Technical Questions: For the ’524 Patent, a key question will be whether using a single source of water (from one tank) that is split into two paths—one heated, one not—meets the claim limitation of "another solvent, separate from the solvent." The analysis may turn on whether a change in temperature alone renders the water a "separate" solvent in the context of the patent's disclosure.

V. Key Claim Terms for Construction

Claim Term: "a removal conduit" ('456 Patent)

  • Context and Importance: This term is critical because the inventive concept of the ’456 Patent relies on the valve's ability to divert off-temperature water away from the brewing chamber to this "removal conduit" until the target temperature is achieved. A narrow definition could allow Defendants to design around the claim, while a broad one is necessary for Plaintiff's infringement theory to succeed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the purpose is to "enable resulting solvent delivered to the brewing chamber at a desired temperature" ('456 Patent, col. 18:38-41). One might argue any path that prevents off-temperature water from reaching the solute, while allowing the system to stabilize, serves this purpose and thus falls within the scope.
    • Evidence for a Narrower Interpretation: Figure 3 of the patent shows the removal path as a distinct "recirculation" loop via pump 327 or a path to a drain, separate from the main flow path to the brewing chamber ('456 Patent, col. 11:61-col. 12:2). This could support an interpretation that "removal conduit" requires a physically separate and distinct pipe or channel, not merely a closed valve state or internal manifold recirculation.

Claim Term: "another solvent, separate from the solvent" ('524 Patent)

  • Context and Importance: The claim requires two "separate" solvents. The Accused Products allegedly use water from a single reservoir. Infringement depends on whether water and heated water from the same source satisfy this limitation. Practitioners may focus on this term because it appears to be a point of factual and definitional mismatch between the claim language and the accused system's physical configuration.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's goal is to mix two fluid streams of different temperatures to achieve a target temperature (’524 Patent, col. 9:45-54). From a functional perspective, the unheated water and the heated water are distinct inputs to the mixing process, which could support an argument that they are functionally "separate" for the purposes of the invention, even if from a common source.
    • Evidence for a Narrower Interpretation: The plain language "another solvent, separate from" could be interpreted to require two chemically different liquids or, at a minimum, liquids from two physically separate sources or reservoirs prior to entering the pumps. The patent does not explicitly define "separate," leaving room for an argument that a single source of water that is merely split into two paths does not meet this limitation.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Defendants induce infringement of the ’271 method patent by providing "instruction manuals, directions, advertising, and other marketing" that instruct consumers on how to use the Accused Products in a way that performs the claimed method steps (Compl. ¶73).

Willful Infringement

  • The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge of the ’456 Patent is alleged based on a June 3, 2020 notice letter (Compl. ¶¶ 46, 55). Knowledge of all three patents is alleged based on the filing of the lawsuit and subsequent service of infringement contentions (Compl. ¶¶ 65, 74). The complaint also notes that the PTAB’s denial of Defendants’ IPR petitions provides further evidence of notice and the potential objective baselessness of any non-infringement or invalidity defenses (Compl. ¶57).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "removal conduit" in the ’456 Patent, which is shown in embodiments as a distinct recirculation loop or drain, be construed to cover the valve and manifold architecture in the accused system that allegedly directs water away from the grouphead?
  • A second central question will be one of technical identity: does water from a single reservoir that is split into a heated path and an unheated path constitute "another solvent, separate from the solvent" as required by claim 1 of the ’524 Patent, or does this language require fluids from physically distinct sources?
  • Finally, an evidentiary question regarding willfulness will be significant: given the alleged pre-suit notice letter and, notably, the PTAB’s decisions denying institution of IPRs on all asserted patents, what evidence can Defendants present to demonstrate an objectively reasonable belief that they did not infringe valid patents?