PTAB

IPR2020-00001

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 ’634 patent relates to a product and method for concurrently brewing and sweetening tea or coffee. The invention involves a water-permeable sieve containing a mixture of beverage particles (tea or coffee) and sugar granules of a specifically defined size range (U.S. mesh sieve nos. 3-35).

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Cooper, Graves, and Sucrose Guide - Claims 1, 5, 8, and 10-11 are anticipated under 35 U.S.C. §102 by Cooper or obvious under 35 U.S.C. §103 over Cooper in view of Graves, as informed by the Sucrose Guide.

  • Prior Art Relied Upon: Cooper (Patent 5,895,672), Graves (Patent 3,914,439), and Sucrose Guide (a 1990 user guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner’s argument depended on claim construction. Under an "open-ended" construction (requiring only some sugar granules within the claimed range), Petitioner argued claim 1 is anticipated by Cooper. Cooper disclosed a sweet tea product using a brewing basket (a sieve) containing tea particles and "commercial grade granulated sugar." Petitioner asserted, based on the Sucrose Guide and expert testimony, that commercial sugar inherently contains a percentage of granules within the claimed 3-35 mesh range. Petitioner argued the patent owner misled the Examiner during prosecution by claiming commercial sugar was outside this range. Under Petitioner’s proposed "exclusive" construction (requiring all sugar granules within the range), Cooper does not anticipate, but the claims are obvious.
    • Motivation to Combine (for §103): For the obviousness challenge under the "exclusive" construction, a person of ordinary skill in the art (POSITA) would combine Cooper with Graves. Cooper taught the basic combination of tea and sugar in a sieve. Graves taught a tea bag with a crystalline sugar core, preferring a particle size between 30 and 50 mesh and teaching that smaller crystals are ineffective. A POSITA would be motivated to modify Cooper’s product by selecting sugar granules exclusively within the claimed 3-35 mesh range, which overlaps with Graves’s preferred range, to ensure effective brewing and avoid the problems with smaller particles noted by Graves.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Cooper taught that any readily dissolvable sweetener is suitable, and Graves provided an effective particle size range for sugar used in tea bags.

Ground 2: Obviousness over AU ’497, Cooper, and Graves - Claims 1, 5, 8, and 10-11 are obvious over the AU ’497 application in combination with Cooper and/or Graves.

  • Prior Art Relied Upon: AU ’497 application (Australian Patent Application No. AU 2011100497), Cooper (Patent 5,895,672), and Graves (Patent 3,914,439).
  • Core Argument for this Ground:
    • Prior Art Mapping: The AU ’497 application disclosed combining tea and sugar together in tea bags, specifying the use of various sugars including "white sugar" (equivalent to U.S. commercial grade sugar) and "rock sugar." Petitioner’s expert asserted that both of these sugar types inherently contain particles within the claimed 3-35 mesh range. This reference taught the core combination. Cooper supplied teachings of a brewing chamber for rapidly obtaining a consistent extract, which could then be diluted.
    • Motivation to Combine: A POSITA would combine the pre-packaged tea/sugar bag of the AU ’497 application with the brewing chamber method taught by Cooper to achieve a more rapid and consistent sweetened tea product. To satisfy the "exclusive" construction, a POSITA would be further motivated by Graves to select only sugar granules within the 3-35 mesh range to ensure all sugar is within the effective size range taught by Graves.
    • Expectation of Success: Success would be expected because both the AU ’497 application and Cooper are directed to tea brewing. The AU ’497 application taught that various forms of sugar could be used, indicating flexibility in the sugar component.

Ground 3: Obviousness over Harriman, Cooper, and Graves - Claim 12 is obvious over Harriman in combination with Cooper and Graves, as informed by the Sucrose Guide.

  • Prior Art Relied Upon: Harriman (Patent 2,330,884), Cooper (Patent 5,895,672), Graves (Patent 3,914,439), and Sucrose Guide (a 1990 user guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 12 is a method claim identical to claim 10 but recites "coffee grounds" instead of "tea particles." Petitioner argued the patent treats tea and coffee as interchangeable. Harriman disclosed a method for brewing coffee using a filter paper sieve containing a blend of coffee grounds and sugar, teaching every limitation of claim 12 except the specific sugar particle size. The teachings of Cooper, Graves, and the Sucrose Guide regarding sugar particle size are applied to Harriman’s coffee brewing method.
    • Motivation to Combine: A POSITA would be motivated to use a specific sugar size in Harriman's coffee-and-sugar packet for the same reasons articulated in Ground 1: to improve effectiveness by using larger sugar crystals as taught by Graves. The goal would be to apply a known solution (optimizing sugar particle size) to a similar problem (brewing a sweetened beverage).
    • Expectation of Success: A POSITA would expect this combination to succeed, as it merely substitutes a known optimal sugar particle size into an existing method for brewing coffee with sugar.

4. Key Claim Construction Positions

  • Disputed Term: "said sugar granules include granules having a size in the range of U.S. mesh sieve nos. 3-35"
  • Petitioner's Proposed Construction: "said sugar granules having a size exclusively in the range of U.S. mesh sieve nos. 3-35"
  • Rationale: Petitioner argued that during prosecution, the applicants overcame rejections by amending claims to add this "critical" size range and submitted Rule 132 declarations based on tests using only sugar screened to be exclusively within this range. The applicants also allegedly disclaimed sugar blends containing particles both inside and outside the range (i.e., common grocery store sugar) by distinguishing it as different from their invention. Petitioner contended this prosecution history estoppel and disclaimer compel a narrow construction where all sugar granules must fall within the specified range.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and cancellation of claims 1, 5, 8, and 10-12 of Patent 9,549,634 as unpatentable.