PTAB

IPR2019-01671

Red Diamond Inc v. Southern Visions LLP

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1. Case Identification

2. Patent Overview

  • Title: Domestic Sweet Tea Brewing Product and Process
  • Brief Description: The ’330 patent discloses a product and method for brewing sweet tea. The invention involves a water-permeable pouch containing a mixture of tea particles and sugar granules, with the sugar granules having a specific, "critical" size range of U.S. mesh sieve nos. 3-35.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Cooper and Graves - Claims 1, 6, 10, 11, and 12 are unpatentable under 35 U.S.C. §§ 102/103.

  • Prior Art Relied Upon: Cooper (Patent 5,895,672), Graves (Patent 3,914,439), and the Sucrose Guide (a 1990 user's guide).
  • Core Argument for this Ground: Petitioner presented alternative arguments contingent on the construction of the claim term "include granules having a size in the range of U.S. mesh sieve nos. 3-35."
    • Prior Art Mapping (Anticipation under an "Open-Ended" Construction): Petitioner argued that if the claims are construed to require only some sugar granules to be within the claimed 3-35 mesh range, then Cooper anticipates claims 1 and 12. Cooper taught a sweet tea brewing product using a permeable pouch containing tea and "commercial grade granulated sugar." Petitioner contended, supported by its expert and the Sucrose Guide, that such sugar inherently contains a significant percentage of granules within the claimed 3-35 mesh range. This argument asserted that the Patent Owner misled the Examiner during prosecution by incorrectly representing that common grocery store sugar falls entirely outside the claimed range.
    • Prior Art Mapping (Obviousness under a "Closed-Ended" Construction): Alternatively, if the claims are construed to require that all sugar granules fall exclusively within the 3-35 mesh range, Petitioner argued the claims are obvious over Cooper in view of Graves. Cooper disclosed the basic system of a water-permeable pouch with tea and sugar. Graves was directed to tea bags and taught that for effective brewing, sugar particles should preferably be in a 30-50 mesh range, expressly teaching the avoidance of very small sugar crystals. A POSITA would have found it obvious to apply Graves's teaching on optimal sugar size to Cooper's brewing system.
    • Motivation to Combine (for §103 ground): A POSITA would combine Cooper’s system with Graves’s specific sugar size teaching to improve brewing performance. Graves provided a clear reason to select larger sugar granules and avoid smaller ones in a tea bag application, which directly addressed the problem of optimizing a combined tea and sugar brewing product like Cooper's.
    • Expectation of Success (for §103 ground): A POSITA would have a high expectation of success, as both references are in the field of tea brewing, and Cooper explicitly stated that any readily dissolving sweetener could be used in its system.

Ground 2: Obviousness over AU ’497, Cooper, and/or Graves - Claims 1, 6, 10, 11, and 12 are obvious over the AU '497 application in combination with Cooper and/or Graves.

  • Prior Art Relied Upon: AU '497 (Application # AU 2011100497), Cooper (Patent 5,895,672), and Graves (Patent 3,914,439).
  • Core Argument for this Ground: This ground also relied on alternative claim constructions.
    • Prior Art Mapping: The AU '497 application disclosed combining tea and various forms of sugar (including "white sugar" and "rock sugar") together in a single water-permeable tea bag. Under an open-ended construction, Petitioner argued that the disclosed "white sugar" (equivalent to commercial grocery sugar) and "rock sugar" inherently contain particles within the claimed 3-35 mesh range. Cooper taught using such a pre-packaged pouch in an automated brewing chamber to produce a tea concentrate. Under a closed-ended construction, a POSITA would additionally look to Graves, which taught using a preferred sugar size range of 30-50 mesh to ensure effective brewing in a bag, thus arriving at a product where all granules are within the claimed range.
    • Motivation to Combine: A POSITA would combine the convenient pre-packaged tea-and-sugar bag of AU '497 with Cooper's efficient brewing machine method to achieve consistent, high-quality results. The motivation to incorporate Graves's teachings was to optimize the sugar particle size specifically for use in a bag format, a problem directly addressed by Graves.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because all cited references address the same technical field of tea brewing and provide compatible teachings for combining their respective features.

4. Key Claim Construction Positions

  • Petitioner dedicated a significant portion of the petition to the construction of the term “said sugar granules include granules having a size in the range of U.S. mesh sieve nos. 3-35.”
    • Petitioner's Proposed Construction: Petitioner argued the term must be construed to mean that the sugar granules are exclusively within the 3-35 mesh range.
    • Basis for Construction: This argument was based on prosecution history estoppel. Petitioner asserted that the Applicants secured the patent by repeatedly arguing to the Examiner that this size range was "critical" and produced "unexpected results." To support this, the Applicants allegedly disclaimed subject matter by (1) conducting an in-person demonstration that contrasted their invention with "store bought" sugar (which contains granules both inside and outside the range), implying the latter was not part of the invention, and (2) submitting Rule 132 declarations based on tests where the sugar samples were first screened to ensure they consisted exclusively of particles within the claimed range.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 6, 10, 11, and 12 of Patent 9,468,330 as unpatentable.