DCT
1:16-cv-01241
Rothschild Connected Devices Innovations LLC v. Coca Cola Co
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Connected Devices Innovations, LLC (Texas)
- Defendant: The Coca-Cola Company (Delaware)
- Plaintiff’s Counsel: Carey Rodriguez Greenberg Paul, LLP
- Case Identification: 1:16-cv-01241, S.D. Fla., 10/30/2015
- Venue Allegations: Venue is alleged to be proper in the Southern District of Florida because the plaintiff has suffered injury in the district and the defendant has committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Coca-Cola Freestyle beverage dispenser and associated mobile application infringe patents related to systems for creating personalized consumer products.
- Technical Context: The technology at issue involves connecting a physical dispensing machine to a network server to retrieve a user's pre-saved preferences and mix a customized beverage on demand.
- Key Procedural History: The complaint alleges that the plaintiff approached the defendant on at least one occasion prior to the lawsuit to discuss licensing the patents-in-suit. Subsequent to the complaint's filing, U.S. Patent No. 8,788,090 was the subject of an Inter Partes Review (IPR2016-00443), which resulted in the cancellation of claims 1-8. The asserted claim 13 of the '090 patent was not subject to this cancellation.
Case Timeline
| Date | Event |
|---|---|
| 2006-06-20 | Priority Date for ’377 and ’090 Patents |
| 2013-04-09 | Issue Date for U.S. Patent No. 8,417,377 |
| 2014-07-22 | Issue Date for U.S. Patent No. 8,788,090 |
| 2015-10-23 | Date of access for website describing accused app feature |
| 2015-10-30 | Complaint Filing Date |
| 2016-01-11 | IPR Filed Against ’090 Patent (IPR2016-00443) |
| 2018-01-12 | IPR Certificate Issued Cancelling Claims 1-8 of ’090 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,417,377 - "System and Method for Creating a Personalized Consumer Product," issued April 9, 2013
The Invention Explained
- Problem Addressed: The patent's background describes a market where consumers are offered many product variations (e.g., different flavors of soda or types of shampoo) but still lack products that are specifically tailored to their individual needs or preferences (’377 Patent, col. 1:36-44).
- The Patented Solution: The invention provides a system where a user can define and store their specific product preferences on a network server. A dispensing device, such as a soda fountain, can then access the server, retrieve the user’s stored preferences, and mix the product ingredients—such as carbonation level, sweetness, and flavors—to create a personalized beverage for the user on the spot (’377 Patent, Abstract; col. 6:5-24).
- Technical Importance: This approach enabled on-demand, mass-customization of consumable products by linking a physical point-of-sale dispenser with a user's centrally-managed digital profile (’377 Patent, col. 1:52-60).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶21).
- Independent Claim 1 recites a product to be consumed, comprising:
- a housing;
- at least one compartment containing an element of the product;
- at least one valve coupling the compartment to a mixing chamber;
- a controller to actuate the valve;
- a communication module to transmit a product identifier to a server, receive user preferences from the server, and communicate settings to the controller; and
- an exit port for dispensing.
- Independent Claim 11 recites a beverage dispenser, comprising:
- at least one compartment containing a beverage element;
- at least one valve coupling the compartment to a dispensing section;
- a mixing chamber;
- a user interface module to receive a user's identity and a beverage identifier;
- a communication module to transmit the user/beverage identity to a server, receive user-generated preferences from the server, and communicate them to a controller; and
- a controller to actuate the valve and mixing chamber based on the preferences.
U.S. Patent No. 8,788,090 - "System and Method for Creating a Personalized Consumer Product," issued July 22, 2014
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’377 Patent, the ’090 Patent addresses the same problem of providing consumers with products specifically tailored to their individual preferences (’090 Patent, col. 1:45-53).
- The Patented Solution: The invention describes a system for personalizing a beverage by allowing a user to register their identity and preferences with a remote server. At a beverage dispenser, the user identifies themself, allowing the dispenser to retrieve the stored preferences over a network and mix a custom beverage according to those preferences (’090 Patent, Abstract; Fig. 5).
- Technical Importance: The technology facilitates a user experience where personalized beverage formulas can be created, stored online, and recalled at any compatible dispenser, separating the act of preference-setting from the act of dispensing (’090 Patent, col. 2:25-33).
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶34).
- Independent Claim 13 recites a beverage dispenser, comprising:
- at least one compartment containing a beverage element;
- at least one valve coupling the compartment to a dispensing section;
- a mixing chamber;
- a user interface module to receive a user's identity and a beverage identifier;
- a communication module to transmit the beverage identifier to a server; and
- a controller to actuate the valve and mixing chamber based on user-generated beverage product preferences.
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentality as the "Coca-Cola Freestyle system," which comprises the "Coca-Cola Freestyle" beverage dispenser and the "Coca-Cola Freestyle app" (Compl. ¶15, ¶19, ¶21).
Functionality and Market Context
The complaint alleges the Freestyle dispenser is a freestanding machine capable of dispensing over 100 different drinks from a single exit port by using a mixing chamber to combine ingredients from various "flavor cartridges" (Compl. ¶15-16). These cartridges are allegedly outfitted with RFID tags, and the dispenser contains a cellular and Ethernet communication module for connecting to Coca-Cola's servers (Compl. ¶18). The system operates in conjunction with a mobile app that allows users to create, save, retrieve, and communicate their personalized beverage mixes to the dispensers (Compl. ¶19). A user can scan a code on the machine with the app, which then prompts the machine to pour the user's custom creation (Compl. ¶20).
IV. Analysis of Infringement Allegations
’377 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The physical chassis of the Coca-Cola Freestyle beverage dispenser. The complaint includes a picture of the external housing (Figure 1). | ¶22 | col. 4:15-16 |
| at least one compartment containing an element of the product | So-called "flavor cartridges" located within the dispenser. A photograph (Figure 2) shows the arrangement of these cartridges inside the machine. | ¶23 | col. 4:17-19 |
| at least one valve coupling the at least one compartment to a mixing chamber for mixing a final product | A valve connected to each flavor cartridge via a feed line, enabling the flavor to be dispensed into the mixing chamber. An image (Figure 3) illustrates the mixing chamber. | ¶24 | col. 4:20-22 |
| a controller configured to actuate the at least one valve and to control an amount of the element to enter the mixing chamber | A controller that actuates the valves to control the amount of flavor entering the mixing chamber. | ¶25 | col. 4:27-29 |
| a communication module configured to transmit an identifier of the product to a server over a network, receive product preferences of the user from the server...and communicate to the controller the specific valve settings... | The Freestyle app and dispenser's network connection, which allegedly transmit the dispenser's identity to Coca-Cola servers and receive the user's beverage mix preference, which is then used to actuate the valves. | ¶26 | col. 4:32-40 |
| an exit port disposed on the housing for dispensing the final product | The single dispensing nozzle on the front of the Freestyle housing. A photograph (Figure 4) depicts a user placing a cup under this exit port. | ¶27 | col. 4:58-60 |
Identified Points of Contention
- Scope Questions: A primary question is whether the combination of a physical dispenser and a separate mobile app constitutes the single "product" recited in Claim 1. The claim appears to describe a self-contained apparatus.
- Technical Questions: The complaint alleges a specific data flow where preferences are received "from the server." A factual dispute may arise over whether the server is the source of the preferences (as the patent describes) or merely a pass-through for instructions originating from the mobile app.
’090 Patent Infringement Allegations
The complaint provides less distinct factual support for infringement of the ’090 patent, largely realleging the functionality described for the ’377 patent.
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one compartment containing an element of a beverage | The various Coca-Cola branded beverage flavors contained in compartments. | ¶35 | col. 10:4-5 |
| at least one valve coupling the at least one compartment to a dispensing section... | Each flavor compartment contains at least one valve coupling. | ¶35 | col. 10:6-9 |
| a mixing chamber for mixing the beverage | The dispenser is equipped with a mixing chamber (as described in ¶16). | ¶16, ¶34 | col. 10:10 |
| a user interface module configured to receive an identity of a user and an identifier of the beverage | The Coca-Cola Freestyle app, which allows users to sign in and select beverages. The complaint provides screenshots of the app's interface (Figure 5). | ¶29, ¶36 | col. 10:11-13 |
| a communication module configured to transmit the identifier of the beverage to a server over a network | The Freestyle app's communication functions, which connect to Coca-Cola's servers. | ¶30, ¶36 | col. 10:14-16 |
| a controller configured to actuate the at least one valve...based on user generated beverage product preferences | The dispenser's controller, which is allegedly coupled via the network to the app and actuates valves to dispense the mix received from the user. | ¶36 | col. 10:17-21 |
Identified Points of Contention
- Scope Questions: Similar to the ’377 patent, a key dispute will be whether the claimed "beverage dispenser" can be interpreted to include components (the "user interface module" and "communication module") that exist as a software application on a separate device owned by the user.
- Technical Questions: The complaint's allegations for this patent are more conclusory than for the '377 patent. A point of contention may be the lack of detailed evidence in the complaint mapping the specific steps of Claim 13 to the accused system's operation, particularly how "user generated beverage product preferences" are used by the controller.
V. Key Claim Terms for Construction
Term: "user interface module" (’377 Patent, Claim 11; ’090 Patent, Claim 13)
- Context and Importance: This term's construction is critical because the plaintiff's infringement theory identifies the separately-downloaded "Coca-Cola Freestyle app" as this module (Compl. ¶29). Practitioners may focus on this term because its scope will determine whether the claims can read on a distributed system of a dispenser and a mobile device, or if they are limited to a single, integrated apparatus.
- Intrinsic Evidence for a Broader Interpretation: The specification states the user interface module enables communication "via a keyboard, voice recognition module, WiFi communication...RFID communications, infrared communication," which suggests the module could be a component that communicates wirelessly with the user, potentially from a separate device (’377 Patent, col. 6:63-col. 7:4).
- Intrinsic Evidence for a Narrower Interpretation: The patent's Figure 4 depicts the "User Interface Module" (416) as a block located physically inside the housing (402) of the "Beverage Dispenser" (400). This figure suggests an integrated physical component, not a disembodied software application on a third-party device.
Term: "receive user generated beverage product preferences...from the server" (’377 Patent, Claim 11)
- Context and Importance: The infringement case hinges on the specific flow of data between the user, server, and dispenser. The definition of receiving preferences "from the server" is central to whether the accused system's architecture meets this limitation.
- Intrinsic Evidence for a Broader Interpretation: The specification describes a process where the server determines preferences based on a user questionnaire and then stores them in a database for later retrieval, suggesting the server is an active participant in creating or storing the definitive preference data (’377 Patent, col. 8:12-24).
- Intrinsic Evidence for a Narrower Interpretation: A defendant could argue that this language requires the server to be the authoritative source or originator of the preference data transmitted to the dispenser. If the accused system's server merely acts as a message router or passive conduit for a mix defined in real-time on the user's app, it may not "receive" preferences "from the server" in the manner contemplated by the patent.
VI. Other Allegations
Indirect Infringement
The complaint does not contain a formal count for indirect infringement. However, the factual allegations may support such a claim. The complaint alleges that Coca-Cola makes and distributes both the dispenser and the app, and that its own website instructs users on how to use them together to "pour their very own creations," which could be construed as evidence of active inducement (Compl. ¶19-20).
Willful Infringement
The complaint alleges that infringement has been willful, based not only on "information and belief" but also on the specific factual allegation that Rothschild approached Coca-Cola "on at least one prior occasion" to license the ’377 and ’090 patents, giving Coca-Cola pre-suit knowledge of the patents (Compl. ¶33, ¶38, ¶41, ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and system architecture: can the term "beverage dispenser," as claimed in the patents, be construed to cover a distributed system comprising a physical machine and a separate software application running on a user's mobile phone? The resolution will likely depend on the construction of "user interface module."
- A key question for the ’090 patent will be the impact of the post-grant IPR proceeding. While asserted claim 13 survived, the cancellation of eight other claims in the patent could influence litigation dynamics, including claim construction, validity arguments, and potential damages assessments for this patent.
- A central evidentiary question will be one of data flow and functionality: does the accused system's server play the active role in generating or serving preferences as described in the patent specification, or does it function as a more passive conduit for instructions originating from the user's app? The evidence on this point will be critical to determining literal infringement of the method-like limitations within the apparatus claims.