Decent Espresso Intl Ltd v. Duvall Espresso IP Enforcement LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Case Number: [IPR2025-00747](https://ai-lab.exparte.com/case/ptab/IPR2025-00747)
- Patent #: [11,957,271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001)
- Filed: March 17, 2025
- Petitioner(s): [Decent Espresso International Ltd](https://ai-lab.exparte.com/party/decent-espresso-intl-ltd).
- Patent Owner(s): [Duvall Espresso IP Enforcement, LLC](https://ai-lab.exparte.com/party/duvall-espresso-ip-enforcement-llc)
- Challenged Claims: 1-10

## 2. Patent Overview
- Title: Method and System for Generating a Desired Temperature of an Infused Beverage
- Brief Description: The [’271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001) patent relates to a system for brewing infused beverages, such as coffee, using an electro-mechanical device. The system uses two separate pumps to induce the flow of two solvents through separate conduits, heats at least one solvent, and then combines them upstream of a brewing chamber to achieve a precise final temperature.

## 3. Grounds for Unpatentability
#### Ground 1: Claims 1-4 are anticipated by or obvious over Startz.
- **Prior Art Relied Upon:** Patent 8,973,487 ("[Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003)").
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) discloses all limitations of independent claim 1. [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) describes a coffee machine with a main flow path (second conduit) and a bypass flow path (first conduit). It uses a main pump (second pump) and a bypass pump (first pump) to move water through these separate conduits. The main path includes a heating device (thermal modulator) to create hot water, while the bypass path carries cooler water. The two paths combine upstream of the brewing device, allowing the mixing of hot and cold water to achieve a desired temperature for the infused beverage, which is then discharged. Petitioner asserted that [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) discloses the additional limitations of dependent claims 2-4, including heating the bypass path (first solvent) and using two separate thermal modulators and two separate pumps.
    - **Motivation to Combine (for §103 grounds):** To the extent any limitation is not explicitly disclosed, Petitioner argued a person of ordinary skill in the art (POSA) would be motivated to modify [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) to include it. For example, if the Board determines the "second solvent" must be different from the first, a POSA would have found it obvious to use a different liquid (e.g., milk, as taught by [Majer](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1008) or an aromatic liquid as taught by [Porzio](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1011)) in one of the conduits to create different beverage types.
    - **Expectation of Success (for §103 grounds):** A POSA would have had a high expectation of success in making such modifications, as they involved applying known principles of fluid dynamics and thermal control common in the beverage-making art.

#### Ground 2: Claims 5-6 are obvious over Startz in view of Buttiker.
- **Prior Art Relied Upon:** [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003), European Patent Publication EP 2 612 577 A1 ("[Buttiker](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1009)").
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) teaches the base system of claim 4 (two pumps, two conduits, two heaters). Claim 5 adds "electronically controlling the first and second pumps with an electronic controller to selectively modulate the flows," and claim 6 adds "electronically controlling the first and second thermal modulators." While Startz’s controller is not detailed, [Buttiker](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1009) explicitly discloses an electronic controller (microprocessor 20) that receives data from flow meters and controls two feed pumps (31, 32) and two heaters (41, 42) to precisely modulate flow rates and temperatures based on user-selected parameters.
    - **Motivation to Combine (for §103 grounds):** A POSA seeking to improve the precision and consistency of the [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) system would combine it with the advanced electronic control system of [Buttiker](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1009). The [’271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001) patent itself identifies the problem of inconsistent beverage output and the need for precise control. [Buttiker](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1009) directly addresses this by using a microprocessor to independently control pumps and heaters, providing the exact solution a POSA would seek to implement in the [Startz](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1003) framework.
    - **Expectation of Success (for §103 grounds):** Integrating known electronic controllers with pumps and heaters was a routine practice in the art, ensuring a high expectation of success.

#### Ground 3: Claims 1 and 7 are anticipated by or obvious over Coccia.
- **Prior Art Relied Upon:** Application # 2011/0097454A1 ("[Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006)").
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006) anticipates all limitations of independent claim 1 and dependent claim 7. [Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006) describes a coffee machine where water from a source is split into a hot water duct (6) and a cold water duct (8). The hot water is heated by a heat exchanger (5). The two ducts are separate and combine at a mixing point (7) upstream of the brewing chamber (filter unit 31) to create a resulting solvent at a desired temperature. Claim 7 adds "electronically controlling at least one pump with an electronic controller to selectively modulate the flows." [Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006) explicitly discloses a control unit (22, CPU) that receives signals from a flow rate measurement device (28) and regulates the pump (4, 35) speed to control the flow of water.
    - **Motivation to Combine (for §103 grounds):** The obviousness argument is presented as an alternative, asserting that a POSA would have been motivated to combine the teachings of [Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006) with common knowledge or other references (e.g., [Majer](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1008), [Porzio](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1011)) to achieve any minor variations not explicitly disclosed.
    - **Expectation of Success (for §103 grounds):** The combination would have been straightforward, involving the application of well-understood control systems to a known hydraulic circuit.

- **Additional Grounds:** Petitioner asserted additional obviousness challenges over [Coccia](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1006) in view of [Buttiker](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1009), [Giuliano](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1005), [Porzio](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1011), and/or [Majer](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1008) to invalidate claims 8, 9, and 10, relying on similar motivations to add features like dual thermal modulators and more advanced electronic controls.

## 4. Key Claim Construction Positions
- **"Conduit"**: Petitioner argued the applicant acted as a lexicographer, defining "conduit" in the specification as "any channel through which something is conveyed." This broad construction should be adopted.
- **"Second solvent"**: Petitioner argued that the Patent Owner’s infringement contentions in district court construe "a first solvent" and "a second solvent" to mean the same solvent (water) flowing in different conduits (one hot, one cold). Petitioner argued the Patent Owner should be held to this construction, but that even if the solvents must be different, it would have been obvious to use different liquids as taught by the prior art.

## 5. Key Technical Contentions (Beyond Claim Construction)
- **AIA Treatment**: Petitioner contended that all claims of the [’271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001) patent are subject to the first-to-file provisions of the America Invents Act (AIA). Although the patent claims priority to a pre-AIA provisional application, it also claims priority through a chain of applications including Patent [10,772,456](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1014), which Petitioner argued contains claims with an effective filing date after March 15, 2013, due to new matter. Under AIA §3(n)(1), this subjects all claims of the [’271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001) patent to AIA rules, making the asserted prior art available under §102.

## 6. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial under *Fintiv* is unwarranted. The parallel district court case has been stayed pending the outcome of related IPRs against other patents in the same family. The case is in the early stages with minimal investment, and Petitioner filed a *Sotera* stipulation, agreeing not to pursue in district court any invalidity grounds raised or that reasonably could have been raised in the IPR. Petitioner asserted these factors weigh heavily against denial and in favor of institution.

## 7. Relief Requested
- Petitioner requests institution of an *inter partes* review and cancellation of claims 1-10 of the [’271](https://ai-lab.exparte.com/docs/ptab/IPR2025-00747/1001) patent as unpatentable.

Espresso temp control patent challenged: Startz, Coccia & Buttiker cited against claims 1-10 for anticipation & obviousness over dual-pump systems.