PTAB

IPR2019-01662

Red Diamond Inc v. Southern Visions LLP

Title: Beverage Brewing Product
Brief Description: The ’232 patent discloses a beverage brewing product comprising a water-permeable sieve containing a mixture of beverage material (e.g., tea) and granulated sugar. The invention’s asserted novelty centers on the granulated sugar having particles of a specific size, defined as being retained by U.S. mesh sieves in the range of 3 to 35.

Prior Art Relied Upon: Stewart (’389 Publication) (Application # 2015/0050389) and Graves (Patent 3,914,439).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that claims 1 and 17 are not entitled to an earlier priority date due to the addition of new matter (the term "flavored concentrate"), making the ’389 Publication (a parent application) valid prior art. The ’389 Publication allegedly disclosed every element of claim 1 except for a particulate "flavored concentrate." It taught combining tea and sugar of the claimed 3-35 mesh size in a permeable sieve. Graves taught a particulate flavored concentrate—lemon oil compounded on a sugar core—sized within the claimed range and intended for use in tea bags, thereby supplying the missing element.
- Motivation to Combine: A POSITA would combine the particulate flavored concentrate of Graves with the brewing product of the ’389 Publication to achieve a desirable lemon flavor and sweetness in the final beverage.
- Expectation of Success: A POSITA would have a reasonable expectation of success because Graves’s flavored concentrate was specifically designed for use in tea bags, a directly analogous application.

Prior Art Relied Upon: Stewart (’389 Publication) (Application # 2015/0050389), Graves (Patent 3,914,439), Perfect Kool-Aid (a 2002 Food.com recipe), and Sugar Cups (an online conversion table).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Ground 1 to address dependent claims 8 and 13, which added a limitation of a flavored concentrate-to-sugar weight ratio between 1:3 and 1:80. While the primary combination of the ’389 Publication and Graves taught the base invention, the Perfect Kool-Aid recipe taught using 18 grams of drink mix with 1.5 cups of sugar. Using the Sugar Cups reference to convert cups to grams, this yields a ratio of 1:16.7, which falls squarely within the claimed range.
- Motivation to Combine: A POSITA would be motivated to use a known, effective ratio from a common beverage recipe like Perfect Kool-Aid to achieve predictable sweetness and flavor. The extremely broad range recited in the claims suggested that the specific ratio was not critical to the invention.
- Expectation of Success: Success would be expected, as the ratio was taken from a well-known recipe for a sweetened beverage, demonstrating its utility.

Prior Art Relied Upon: AU ’497 Application (Australian Patent Application No. AU 2011100497), Graves (Patent 3,914,439), and Cooper (Patent 5,895,672).
Core Argument for this Ground:
- Prior Art Mapping: The AU ’497 application taught combining tea with various sugars (including white and rock sugar) in permeable tea bags. Petitioner contended that under an "open-ended" claim construction, this inherently disclosed the claimed sugar size, as standard grocery sugar (equivalent to Australian white sugar) and rock sugar contain particles within the 3-35 mesh range. Cooper taught a system for brewing a concentrated tea extract for later dilution, and Graves again supplied the particulate flavored concentrate.
- Motivation to Combine: A POSITA would combine the teachings to improve the AU ’497 product by adding the lemon flavor from Graves and using the brewing method from Cooper to produce a consistent, high-quality, flavored beverage.
- Expectation of Success: There was a high expectation of success as all three references are directed to the same field of brewing sweetened beverages and solving similar problems.

Prior Art Relied Upon: AU ’497 Application, Graves, Cooper, Perfect Kool-Aid, and Sugar Cups.
Core Argument for this Ground:
- Prior Art Mapping: This ground extended the combination of Ground 3 to address the weight ratio limitations of claims 8 and 13. It used the AU ’497/Graves/Cooper combination to teach the base product and added the Perfect Kool-Aid recipe and Sugar Cups conversion to teach a weight ratio of 1:16.7, which is within the claimed 1:3 to 1:80 range.
- Motivation to Combine: The motivation was identical to that in Ground 2: to use a known, effective ratio from a common beverage recipe to achieve desired flavor and sweetness.
- Expectation of Success: Success was reasonably expected for the same reasons articulated in Grounds 2 and 3.

Petitioner argued for a narrow construction of the term "includes particles having a size in the range of U.S. mesh sieve nos. 3-35" to mean that the sugar must have a size exclusively in that range. This proposed construction was based on prosecution history estoppel and disclaimer. Petitioner asserted that the inventors, to overcome prior art, repeatedly emphasized the "criticality" of this exact range and distinguished it from standard grocery sugar. Further, all tests submitted to show "unexpected results" were performed on sugar samples that had been screened to remove any particles outside this "critical" range. This construction was central to Petitioner's argument that the inventors surrendered any claim to sugar blends containing particles both inside and outside the specified range.

A central technical contention was that the Patent Owner misled the Examiner regarding the particle size of common "grocery store sugar" (also known as EFG sugar). During prosecution, the inventors and their declarants represented that grocery store sugar was in the 40-60 mesh range, placing it entirely outside the claimed 3-35 mesh range.
Petitioner submitted expert testimony and data (from the Coffield Declaration and the Sucrose Guide) to demonstrate that, in reality, standard grocery store sugar contains a significant percentage of particles that fall within the claimed 3-35 mesh range. This contention was critical because it directly undermined the evidentiary basis for the "unexpected results" that supported patentability, suggesting the patented invention was obvious over prior art that used common sugar.

Petitioner requested that the Board institute an inter partes review and find challenged claims 1, 8, 13, and 17 of Patent 9,725,232 unpatentable.