Nespresso USA Inc v. K fee System GmbH

1. Case Identification

• Case #: IPR2021-01223
• Patent #: 10,870,531
• Filed: July 12, 2021
• Petitioner(s): Nespresso USA, Inc.
• Patent Owner(s): K-FEE System GmbH
• Challenged Claims: 1-16

2. Patent Overview

• Title: Method of Using a Portion Capsule for Producing a Beverage
• Brief Description: The ’531 patent discloses a method for controlling a single-serve beverage brewing machine using a portion capsule. The capsule features a barcode on the bottom side of its circumferential flange and includes vertically oriented grooves and ribs on its wall and in its cavity for structural stability.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5-10, and 15-16 are obvious over Yoakim in view of Jarisch and Rapparini.

• Prior Art Relied Upon: Yoakim (Application # US2010/0239734), Jarisch (Application # US2013/0064937), and Rapparini (Application # US2012/0269933).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yoakim disclosed a centrifugal brewing system and method that met nearly all limitations of the challenged claims, including a capsule with a flange, a barcode reader, and a pump controlled by the barcode. However, Yoakim did not explicitly disclose placing the barcode on the bottom side of the flange or the specific vertical grooves and ribs. Jarisch supplied the missing barcode location, teaching an optical code on the bottom of the capsule flange to improve reading reliability by moving it away from potential soiling. Rapparini supplied the missing structural features, disclosing longitudinal stiffening ribs and grooves on a capsule body to increase stability.
  • Motivation to Combine: A POSITA would combine Yoakim’s system with Jarisch’s improved barcode location to achieve the predictable benefit of more reliable barcode reading, a motivation Jarisch explicitly provided. Jarisch was expressly intended for use with centrifugal systems like Yoakim’s. A POSITA would also incorporate Rapparini's well-known technique of adding ribs and grooves to stiffen Yoakim’s capsule, a simple design choice to predictably increase capsule stability during brewing.
  • Expectation of Success: A POSITA would have a high expectation of success. The combination involved applying known solutions to known problems—improving barcode readability and capsule strength—using art from the same field. Jarisch detailed how to modify a brewing chamber for a bottom-read barcode, and applying stiffening ribs was a common and predictable structural modification.

Ground 2: Claims 1-2, 5-10, and 15-16 are obvious over Panesar in view of Mock.

• Prior Art Relied Upon: Panesar (WO 2005/079638) and Mock (Application # US2006/0233921).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended Panesar disclosed a single-serve beverage system that taught most claim limitations, including a capsule with a barcode on its flange used to control brewing parameters like water pump operation. Panesar rendered obvious placing the barcode on the bottom side of the flange to avoid soiling. Mock, in turn, disclosed a deep-drawn aluminum capsule with vertically oriented grooves and ribs that reinforce the capsule structure and prevent rotation. The combination of Mock's aluminum construction and material properties met the claimed "electrically conductive section" limitation.
  • Motivation to Combine: Panesar explained its capsule was subject to high compressive forces. A POSITA would be motivated to modify Panesar's capsule with the reinforcing ribs taught by Mock to predictably improve structural stability against these forces. Mock also taught its ribs prevent unwanted rotation, directly addressing another issue raised in Panesar. A POSITA would use Mock's aluminum material for its known superior oxygen barrier properties, a desirable feature for beverage capsules.
  • Expectation of Success: Success would be expected because the combination integrated structurally similar capsules to solve known problems. Applying Mock's established reinforcement technique to Panesar's capsule was a straightforward modification to achieve the predictable results of increased strength and stability.

• Additional Grounds: Petitioner asserted additional obviousness grounds for claims 3-4 and 11-14 by adding Castellani (Application # US2008/0105131) to the primary combinations of Yoakim/Jarisch/Rapparini and Panesar/Mock. Castellani was cited for its teaching of an automatic capsule ejection mechanism using holding arms and a dropping box.

4. Key Technical Contentions (Beyond Claim Construction)

• Improper Priority Claim: A central contention was that the ’531 patent was not entitled to its claimed foreign priority dates. Petitioner argued that no single priority document disclosed all limitations required by the claims—specifically, the combination of a barcode on the bottom side of the flange and vertical grooves/ribs. Because these features were disclosed only in separate priority applications, the patent's earliest effective priority date was its PCT filing date of July 22, 2011. This argument was critical for establishing that Jarisch (filed May 12, 2011) qualifies as prior art under pre-AIA §102(e).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate for several reasons. First, the asserted prior art combinations and arguments were never considered by the Examiner. Except for Jarisch, none of the primary references were applied during prosecution. Second, the Examiner materially erred by allowing the claims over Jarisch based on an incorrect priority date assessment. The petition presented new evidence and arguments on the priority issue that were not before the Examiner. This error was material because it led the Examiner to improperly discount a key prior art reference.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of Patent 10,870,531 as unpatentable under 35 U.S.C. §103.