DECENT Espresso Intl Ltd v. Duvall Espresso IP Enforcement LLC

1. Case Identification

• Case #: IPR2025-00747
• Patent #: 11,957,271
• Filed: March 17, 2025
• Petitioner(s): Decent Espresso International Ltd.
• Patent Owner(s): 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 patent describes methods and systems for brewing infused beverages, such as coffee or tea. The technology involves using two separate conduits, each with its own pump and thermal modulator, to independently control the flow and temperature of two solvents before they are combined and passed through a solute in a brewing chamber.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are Anticipated by or Obvious over Startz

• Prior Art Relied Upon: Startz (Patent 8,973,487 and Application # 2012/0291634), supplemented by the knowledge of a POSA and references including Porzio (WO 2011/158131) and Majer (WO 2011/151703A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Startz discloses all limitations of claims 1-4. Startz describes a coffee machine with a main flow path (a second solvent conduit) and a bypass flow path (a first solvent conduit). Each path has a dedicated pump (main pump 7, bypass pump 8) to induce flow. The main path includes a heater (thermal modulator) to heat the water (second solvent), which is then combined with unheated water (first solvent) from the bypass path upstream of the brewing device. This combination achieves a desired mixing temperature for brewing. Startz also discloses a second heater on the bypass path, meeting the limitations of dependent claims 2 and 3.
  • Motivation to Combine (for §103 grounds): To the extent Startz is found not to explicitly teach certain control features, Petitioner contended a person of ordinary skill in the art (POSA) would have been motivated to add them. A POSA seeking to solve known problems of brewing inconsistency would have looked to well-known electronic control systems, as taught by Porzio or Majer, to enhance the precision and dynamic control of the pumps and heaters in Startz's system.
  • Expectation of Success: A POSA would have had a high expectation of success in integrating known electronic controllers and sensors with the fluid paths of Startz, as these were common components in the beverage-making art.

Ground 2: Claims 1 and 7 are Anticipated by or Obvious over Coccia

• Prior Art Relied Upon: Coccia (Application # 2011/0097454A1), supplemented by the knowledge of a POSA and references including Porzio and Majer.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Coccia anticipates the method of claim 1 and the system of claim 7. Coccia discloses a coffee machine that induces the flow of a first solvent (cold water) through a first duct and a second solvent (hot water) through a second duct. A single pump drives the flow. The hot water is heated by a heat exchanger (thermal modulator). The two solvents are combined at a mixing point upstream of the brewing chamber to form a resulting solvent at a desired temperature. Coccia further discloses an electronic controller that modulates the pump speed based on flow rate and pressure sensor data to generate a desired flow rate of the resulting solvent.
  • Motivation to Combine (for §103 grounds): While Coccia discloses electronic control, it uses a single pump. Petitioner argued a POSA would have been motivated to incorporate a two-pump system, as taught by references like Majer or Porzio, into Coccia’s design. This would provide independent control over each solvent stream, leading to more precise temperature and flow control, which was a known goal in the art for improving beverage consistency.
  • Expectation of Success: Integrating a second pump into a separate fluid conduit was a straightforward modification for a POSA with a clear expectation of achieving more granular control over the brewing process.

Ground 3: Claims 9-10 are obvious over Coccia in view of Buttiker and/or Giuliano

• Prior Art Relied Upon: Coccia (Application # 2011/0097454A1), Buttiker (European Publication EP 2612577A1), and Giuliano (WO 1991/007898A1).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring thermal modulators on both solvent conduits, which are electronically controlled. Coccia teaches heating only one solvent stream. Buttiker, however, explicitly discloses a coffee brewing system with two pumps that move water through two separate conduits, each equipped with its own electronically controlled heater. Its controller uses data from flow meters to precisely manage both the flow and temperature of each stream before they are mixed. This directly teaches the limitations of claims 9 and 10.
  • Motivation to Combine: Petitioner argued a POSA would combine these references to achieve superior brewing control. Coccia itself suggests that its heat sources could be "independent primary heaters, for example of the type disclosed in WO 91/07898" (Giuliano). This express teaching, combined with the known goal of achieving precise and repeatable beverage extraction, would motivate a POSA to replace Coccia's single-heater design with the more advanced dual-heater, dual-pump, electronically controlled system taught by Buttiker.
  • Expectation of Success: Combining these known systems was predictable, as Buttiker provided a complete, functional blueprint for the precise dual-heating and control system needed to overcome the limitations of Coccia's design.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 5-6 over Startz in view of Buttiker, Porzio, and/or Majer, and against claim 8 over Coccia in view of Buttiker, Giuliano, Porzio, and/or Majer, relying on similar motivations to combine for enhanced electronic control.

4. Key Claim Construction Positions

• "Conduit": Petitioner argued this term should be construed according to the patent’s explicit definition as "any channel through which something is conveyed."
• "Second solvent": Petitioner argued, based on the Patent Owner's own infringement contentions from a parallel district court case, that "a first solvent" and "a second solvent" can be the same substance (e.g., water) flowing through two different, separate conduits.

5. Key Technical Contentions (Beyond Claim Construction)

• AIA Applicability: Petitioner argued that all claims of the ’271 patent are subject to the America Invents Act (AIA) first-to-file provisions. This is because the ’271 patent claims priority to an application that added new matter (e.g., a "recirculation conduit" and "recirculation pump") not present in its pre-AIA provisional application. Under AIA §3(n)(1), if even one claim in an application has an effective filing date on or after March 16, 2013, all claims are treated under the AIA, which makes certain prior art available for the challenge.

6. Arguments Regarding Discretionary Denial

• Petitioner argued strongly against discretionary denial under Fintiv, stating that the factors weigh in favor of institution.
• Key Arguments: The parallel district court litigation has been stayed pending the outcome of related IPRs on patents in the same family. Because the case was stayed early, no trial date is set, and there has been very little investment by the parties in the district court proceedings. Furthermore, Petitioner is filing a Sotera stipulation, agreeing not to pursue in district court the same grounds raised in the IPR.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of the ’271 patent as unpatentable.