DCT

2:15-cv-00522

Eko Brands v. Adrian Rivera Maynez Enterprises Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:15-cv-00522, W.D. Wash., 04/02/2015
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendants transacting extensive business in the State of Washington and providing accused products to customers within the judicial district.
  • Core Dispute: This is a dual-front dispute in which Plaintiff seeks a declaratory judgment that Defendants' patent for a coffee pod adapter is invalid, while simultaneously alleging that Defendants' reusable coffee filter products infringe Plaintiff's own patent.
  • Technical Context: The lawsuit concerns the market for reusable filter accessories designed to allow consumers to use their own ground coffee in single-serve brewing machines, such as those from Keurig, which are originally designed for proprietary disposable cartridges.
  • Key Procedural History: This district court action follows a prior complaint filed by Defendants against Plaintiff at the U.S. International Trade Commission (ITC) on August 4, 2014, alleging infringement of the patent for which Plaintiff now seeks a declaration of invalidity. Plaintiff also alleges that Defendants made false representations to Amazon.com regarding the ITC action and patent infringement, leading to the removal of Plaintiff's product listings. A Reexamination Certificate for Plaintiff's patent, issued after the complaint was filed, amended a key asserted claim.

Case Timeline

Date Event
1975-04-22 Nordskog '772 Patent (cited as prior art) Issue Date
2003-08-29 Keurig '938 Patent (cited as prior art) Issue Date
2003-12-09 Keurig '989 Patent (cited as prior art) Issue Date
2005-10-06 Illy-Caffe' PCT Publication (cited as prior art) Publication Date
2007-07-13 Priority Date for '320 Patent
2011-05-09 Priority Date for '855 Patent
2014-04-29 '855 Patent Issue Date
2014-05-13 '320 Patent Issue Date
2014-08-04 Defendants file ITC complaint against Plaintiff alleging infringement of '320 Patent
2015-01-16 Alleged date Defendants were placed on actual notice of '855 Patent
2015-03-25 Defendants file motion for default against Plaintiff in ITC action
2015-04-02 Complaint Filing Date
2017-02-21 '855 Patent Reexamination Certificate Issued, Amending Claim 8

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

U.S. Patent No. 8,707,855 (Plaintiff's Patent)

  • Patent Identification: U.S. Patent No. 8,707,855, "Beverage Brewing Device," issued April 29, 2014.

The Invention Explained

  • Problem Addressed: The patent background describes the waste generated by disposable single-serve beverage cartridges and the consumer's limited beverage selection. It identifies a need for a reusable filter that can be used with any desired dry beverage medium in brewers originally designed for disposable cartridges. (’855 Patent, col. 1:24-37).
  • The Patented Solution: The invention is a reusable brewing device, or pod, designed to be compatible with single-serve brewers that have both an upper inlet probe (for water) and a lower outlet probe (a sharp needle for piercing disposable cups). The key feature is one or more "outlet probe receptacles" that extend upward from the pod's bottom surface into the brew chamber. These receptacles are designed to receive the brewer's sharp outlet probe without it piercing the pod, thereby "fluidly isolat[ing] the outlet probe from the brew chamber." (’855 Patent, col. 4:41-59, Fig. 2). This allows the reusable pod to function in a machine designed to pierce disposable pods.
  • Technical Importance: This design approach provides a way to make a reusable filter compatible with a popular class of brewers (e.g., Keurig) that use a sharp lower piercing needle, by accommodating that needle within a dedicated, non-brewing space rather than attempting to resist its puncture. (’855 Patent, col. 4:10-19).

Key Claims at a Glance

  • The complaint asserts infringement of claims 8, 9, 12, 13, 14, and 15 (Compl. ¶27). Independent claim 8 was amended during a subsequent ex parte reexamination. The analysis below is based on the amended claim.
  • Amended Independent Claim 8:
    • A body removably receivable within a brewing holster of a single serve beverage brewer, the body defining a brew chamber;
    • First and second outlet probe receptacles defined in the body and extending from the bottom surface of the body into the brew chamber, configured to receive an outlet probe, and positioned substantially 180° apart on the bottom surface of the body;
    • The receptacles are fluidly isolated from the brew chamber to prevent the outlet probe from penetrating the brew chamber;
    • A lid removably securable to the body;
    • An inlet probe opening defined in the lid; and
    • At least one filter defined within the body. (’855 Reexam. Cert., col. 2:1-20).
  • The complaint reserves the right to assert other claims, including dependent claims.

U.S. Patent No. 8,720,320 (Defendants' Patent)

  • Patent Identification: U.S. Patent No. 8,720,320, "Pod Adaptor System for Single Service Beverage Brewers," issued May 13, 2014.

The Invention Explained

  • Problem Addressed: The patent identifies an incompatibility between two types of single-serve formats: brewers designed for rigid, "cup-shaped" cartridges (like K-Cups) cannot use the flatter, disk-shaped filter packages known as "pods." This forces consumers to purchase different machines to use both formats. (’320 Patent, col. 1:40-52).
  • The Patented Solution: The invention is an adaptor assembly that allows a pod to be used in a cartridge-style brewer. It consists of a receptacle and a cover. The receptacle's base has a "passageway" that aligns with the brewer's upward-piercing needle, allowing the needle to pass through without puncturing the pod, which rests on a raised surface inside the receptacle. (’320 Patent, Abstract). The cover has an opening to receive the brewer's downward-extending liquid injector.
  • Technical Importance: The invention serves as an interface to bridge the technical gap between two distinct and otherwise incompatible single-serve beverage formats, expanding the functionality of brewers designed for cup-shaped cartridges. (’320 Patent, col. 2:50-54).

Key Claims at a Glance

  • Plaintiff seeks a declaratory judgment of invalidity for claims 5, 6, 8, 10, 18, 19 and 20 (Compl. ¶1). Independent claims 5, 10, and 18 are implicated.
  • Independent Claim 5:
    • A beverage brewer comprising a brewing chamber and a container;
    • The container has a receptacle and a cover;
    • The receptacle has a base where at least a portion is disposed a predetermined distance above a bottom surface of the brewing chamber;
    • The receptacle has a passageway for fluid flow;
    • The container is used with an inlet port and a needle-like structure disposed below the base;
    • The predetermined distance is selected such that a tip of the needle-like structure does not penetrate the exterior surface of the base. (’320 Patent, col. 9:1-24).
  • The complaint references dependent claims as well.

III. The Accused Instrumentality

  • Product Identification: The complaint accuses Defendants' “ECO-FIL 2.0 Single Serve Coffee Filter” products of infringing the ’855 Patent. (Compl. ¶19). In the context of the declaratory judgment action on the ’320 Patent, the products at issue are Plaintiff's "beverage brewing products" that Defendants previously accused of infringement. (Compl. ¶¶11, 13).
  • Functionality and Market Context: The complaint alleges the ECO-FIL 2.0 is a reusable, single-serve beverage device for use in popular "Keurig" machines. (Compl. ¶¶10-11, 19). It states that the product "incorporate[s] and include[s] the improvements claimed" in the ’855 Patent. (Compl. ¶21). The complaint does not provide further technical details or diagrams of the ECO-FIL 2.0's construction or operation.

IV. Analysis of Infringement & Invalidity Allegations

No probative visual evidence provided in complaint.

’855 Patent Infringement Allegations

The complaint alleges that Defendants' "ECO-FIL 2.0" product infringes at least amended independent claim 8. The complaint does not contain a claim chart or specific factual allegations mapping product features to claim elements, stating only that the products "incorporate and include the improvements claimed." (Compl. ¶21). The following chart summarizes this conclusory allegation.

Claim Element (from Amended Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
a body removably receivable within a brewing holster... the body... define a brew chamber The ECO-FIL 2.0 product is alleged to have a body that defines a brew chamber and is receivable in a brewer holster. ¶¶19, 21 col. 2:47-52
first and second outlet probe receptacles defined in the body and extending from the bottom surface... positioned substantially 180° apart on the bottom surface The ECO-FIL 2.0 product is alleged to have two outlet probe receptacles extending from its bottom surface and positioned 180° apart. ¶¶19, 21 col. 4:49-59
wherein the at least one outlet probe receptacle is fluidly isolated from the brew chamber to prevent the outlet probe from penetrating the brew chamber The receptacles in the ECO-FIL 2.0 product are alleged to be fluidly isolated from the brew chamber. ¶¶19, 21 col. 4:55-59
a lid removably securable to the body The ECO-FIL 2.0 product is alleged to have a removable lid. ¶¶19, 21 col. 2:51-53
an inlet probe opening defined in the lid The lid of the ECO-FIL 2.0 product is alleged to have an inlet probe opening. ¶¶19, 21 col. 2:53-55
at least one filter defined within the body The ECO-FIL 2.0 product is alleged to have a filter within its body. ¶¶19, 21 col. 2:56-60
  • Identified Points of Contention:
    • Factual Question: A central factual dispute will be whether the accused ECO-FIL 2.0 product actually possesses the structure required by the amended claim 8, specifically two outlet probe receptacles positioned 180° apart. The complaint provides no evidence on this point.
    • Scope Question: The meaning of "fluidly isolated" may be disputed. The question is whether this requires a complete seal or merely a functional separation that prevents the brewer's outlet probe from piercing the chamber where coffee is brewed.

’320 Patent Invalidity Allegations

Plaintiff seeks a declaratory judgment that claims of the ’320 Patent are invalid as obvious under 35 U.S.C. § 103. (Compl. ¶22). The complaint asserts that four prior art references, taken together, render the invention obvious. (Compl. ¶¶18-22). The references cited are U.S. Patent Nos. 6,606,938 ("Keurig '938"), 3,878,772 ("Nordskog '772"), and 6,658,989 ("Keurig '989"), along with PCT Publication No. WO 2005/092160 ("Illy-Caffe'"). (Compl. ¶¶18-21). The complaint alleges these references "all relate to single serve beverage brewing products of the type disclosed and claimed in the '320 patent." (Compl. ¶22). It specifically notes that the Nordskog '772 patent was not considered by the USPTO examiner during the prosecution of the '320 patent. (Compl. ¶19). The complaint does not, however, provide a detailed mapping of how these references allegedly teach or suggest the specific limitations of the asserted claims.

V. Key Claim Terms for Construction

’855 Patent (Plaintiff)

  • The Term: "fluidly isolated"
  • Context and Importance: This term is critical for defining the relationship between the brew chamber and the outlet probe receptacle. The infringement analysis depends on whether the accused product's structure meets this requirement. Practitioners may focus on this term because its interpretation will determine whether a mere functional separation is sufficient, or if a more robust, hermetic seal is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim states the purpose is "to prevent the outlet probe from penetrating the brew chamber," suggesting a functional, rather than absolute, definition of isolation. (’855 Patent, col. 15:33-35).
    • Evidence for a Narrower Interpretation: The specification describes the receptacles as defining "a continuous extension of the bottom surface 42 to fluidly isolate the outlet probe O from the brew chamber 36," which could suggest a more physically complete separation. (’855 Patent, col. 4:55-59).

’320 Patent (Defendant)

  • The Term: "predetermined distance is selected such that a tip of the needle-like structure does not penetrate the exterior surface of the base"
  • Context and Importance: This functional language is the core of what makes the adaptor work. The entire non-infringement or invalidity case could turn on whether this limitation is met by an accused product or taught by the prior art. Practitioners may focus on this term because it defines the invention by its result rather than by a specific structure, raising questions about its scope and clarity.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent claims the functional outcome, potentially covering any structure that achieves the non-penetration result, regardless of the specific distance in millimeters. (’320 Patent, col. 9:19-24).
    • Evidence for a Narrower Interpretation: The specification provides specific exemplary dimensions, stating that in one embodiment the distance is "between 1 and 20 mm" and in another "about 10 mm." (’320 Patent, col. 4:9-11). A defendant could argue these embodiments limit the scope of the broader functional language.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendants' infringement of the ’855 Patent is willful. The basis for this allegation is that Defendants were placed on "actual notice" of the ’855 Patent on or about January 16, 2015, but "have taken no action to avoid continued infringement." (Compl. ¶29). This allegation is based on alleged post-suit knowledge.

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

This dual-patent dispute between direct competitors will likely center on three key questions:

  1. A core issue for Plaintiff's infringement claim will be one of evidentiary proof: can Plaintiff demonstrate that Defendants' "ECO-FIL 2.0" product contains the specific two-receptacle, 180-degree-apart structure required by the narrowed, reexamined claim 8 of the ’855 patent?
  2. A central question for Plaintiff's invalidity claim will be one of obviousness: does the combination of prior art—particularly the Nordskog '772 patent, which was not before the examiner—disclose or suggest a pod adaptor with a raised support surface and a needle passageway, thereby rendering the ’320 patent's claims obvious to a person of ordinary skill?
  3. The case will also involve a question of claim construction: how broadly can the functional language of the ’320 patent, which defines a key dimension by the result of avoiding needle penetration, be interpreted in light of the specific embodiments disclosed in the patent?