Hamilton Beach Brands, Inc.v.Courtesy Products, LLC

Patent Trial and Appeal Board

Feb 25, 2015

10943253 (P.T.A.B. Feb. 25, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: February 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HAMILTON BEACH BRANDS, INC.,
Petitioner,

v.

COURTESY PRODUCTS, LLC,
Patent Owner.
____________

Case IPR2014-01260
Patent 7,258,884 B2
____________

Before GRACE KARAFFA OBERMANN, HYUN J. JUNG, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Hamilton Beach Brands, Inc. (“Petitioner”) filed a corrected Petition
(Paper 4, “Pet.”), requesting institution of an inter partes review of claims
1–53 of U.S. Patent No. 7,258,884 B2 (Ex. 1001, “the ’884 patent”).
Courtesy Products, LLC (“Patent Owner”) timely filed a Preliminary
Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under
35 U.S.C. § 314.
Upon consideration of the Petition and Preliminary Response, we
determine that Petitioner has not established a reasonable likelihood that it
would prevail in showing the unpatentability of at least one of the
challenged claims. Accordingly, the Petition is denied under 35 U.S.C.
§ 314(a) for the reasons that follow.
A. Related Proceedings
The ’884 patent is the subject of Courtesy Products, LLC v. Hamilton
Beach Brands, Inc., 1:13-cv-02012-SLR (D. Del.). Pet. 3; Paper 6, 2.
The ’884 patent claims priority to the same application as the patent
that is the subject of an inter partes review petition in Case IPR2014-01257.
Id. The ’884 patent is related also to the patent that is the subject of an inter
partes review petition in Case IPR2014-01258. Id.
B. The ’884 Patent (Ex. 1001)
The ’884 patent describes a method of brewing a single cup of coffee.
Ex. 1001, 4:57–58. The method includes the steps of “providing a single-
use, disposable brew basket 40 [with] brewing reservoir 50,” which is
inserted during another step into basket receiving recess 16 of electric coffee
brewing machine 10. Id. at 4:59–61, 4:65–67.
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Claims 1, 16, and 29 are the independent claims challenged by this
Petition, and claim 1 is reproduced below:
1. A method of supplying in-room beverage service to a
lodging establishment that provides beverage dispensers in
rooms of the lodging establishment for use by a plurality of
different lodging guests, the beverage dispensers comprising a
water reservoir, an electrical heating element for heating water,
and a location at which heated water is discharged, the method
comprising:
(a) providing a plurality of disposable filter packs, the
filter packs containing an amount of grounds to brew
approximately only a single serving of brewed beverage;
(b) providing a plurality of one-time, single-use, single-
serving disposable brew baskets, each brew basket comprising a
bottom and a wall extending generally upwardly from the
bottom to define a brewing reservoir, the bottom and wall being
formed with a disposable rigid one-piece construction, the
bottom having a port there through to permit a brewed beverage
to flow from the brewing reservoir of the disposable brew
basket into a single serving beverage container located
proximate to the beverage dispenser, the wall of the basket
extending upwardly from the bottom to an open top, the
brewing reservoir having a size dimensioned appropriate to
make approximately only a single serving of beverage during a
single brewing operation, the brewing area being sufficiently
large to hold one of the filter packs and the heated water while
brewing without a level of the heated water rising above and
overflowing the open top;
(c) supplying the rooms with at least one of the plurality
of disposable brew baskets;
(d) supplying the rooms with at least one of the
disposable filter packs, where the brew basket and filter pack
are used for brewing a single serving of beverage; and

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(e) after using the brew basket and filter pack in a single
brewing operation, discarding the brew basket and filter pack,
and supplying a new unused brew basket and new filter pack in
the room.
C. Challenges
Petitioner challenges the claims as follows, all on the basis of
obviousness:
References Claims
Challenged
Liu,
1
Sylvan,
2
and Luedtke
3
1–53
Bixby,
4
Sylvan, and Luedtke 1–53

D. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); accord In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015
WL 448667, at *8 (Fed. Cir. Feb. 4, 2015) (“Even if the broadest reasonable
interpretation standard were not incorporated into the IPR provisions of the
statute, the standard was properly adopted by PTO regulation.”).
Petitioner proposes a construction for “‘brewing reservoir.’” Pet. 18.
For the purposes of this Decision, we determine that no express claim
construction is required.

1
U.S. Pat. No. 6,164,191, iss. Dec. 26, 2000 (Ex. 1002).
2
U.S. Pat. No. 5,840,189, iss. Nov. 24, 1998 (Ex. 1003).
3
U.S. Pat. No. 3,446,624, iss. May 27, 1969 (Ex. 1004).
4
U.S. Pat. No. 3,620,155, iss. Nov. 16, 1971 (Ex. 1005).
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II. ANALYSIS
A. Obviousness of Claims 1–53 over Liu, Sylvan, and Luedtke
Petitioner argues that claims 1–53 are unpatentable under 35 U.S.C.
§ 103 over Liu, Sylvan, and Luedtke, referring to disclosures in the
references and a claim chart. Pet. 5, 19–38. Petitioner also relies on a
Declaration by Kurt J. Krause (Ex. 1007, “Krause Declaration”) and a
Declaration by Alexander H. Slocum (Ex. 1009, “Slocum Declaration). Pet.
4.
1. Claims 1–15, 42, 45, 48, and 51
The preamble of claim 1 recites “[a] method of supplying in-room
beverage service to a lodging establishment that provides beverage
dispensers in rooms of the lodging establishment for use by a plurality of
different lodging guests,” and Petitioner argues that “Liu discloses a single
serving beverage maker 8.” Pet. 23 (citing Ex. 1002, 1:58–59, Fig. 1; Ex.
1009 ¶ 29). Petitioner additionally states that “Liu in view of relevant
hospitality industry regulations teaches the limitations.” Id. (citing Ex. 1007
¶¶ 23–27; Ex. 1009 ¶ 32).
Petitioner also argues that “combining Liu, Sylvan, and Luedtke
demonstrates that all the elements in the ’884 Patent were known in the prior
art, and their combination yielded nothing but predictable results.” Id. at 21
(citing Ex. 1009 ¶¶ 40–46). Petitioner further argues that “modifying Liu
according to the teachings of Sylvan would have involved a simple
substitution.” Id. (citing Ex. 1009 ¶¶ 40–41). Petitioner additionally argues
that “it would have also been obvious . . . to extend Luedtke’s known
technique . . . to improve Liu’s filter bag.” Id. at 22 (citing Ex. 1007 ¶ 53;
Ex. 1009 ¶ 45). Petitioner further argues that
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it would have been obvious . . . to supply a hotel room with at
least one disposable brew basket . . . and at least one disposable
filter pack . . . , discard the disposable filter pack and brew
basket after use, and then supply the hotel room with at least
one new unused disposable filter pack and at least one new
unused disposable brew basket . . . because these actions are
inherent to an in-room beverage service.

Id. (citing Ex. 1007 ¶¶ 50–53; Ex. 1009 ¶ 46).
Patent Owner responds that the “petition does not articulate where
each of the claim elements is found in the cited art” and that “the petition
points to ‘hospitality industry regulations,’ which are not part of any
proposed ground and which were improperly added to the discussions of
the limitations in the corrected petition.” Prelim. Resp. 6, 7. In particular,
Patent Owner argues that “[n]othing in the cited portion of Liu, which relates
to a beverage maker ‘designed for use in vehicles’ . . . has anything to do
with the claimed lodging establishment limitations.” Id. at 7 (citing Ex.
1002 1:58–60). Patent Owner also argues that the “petition appears to
acknowledge this deficiency of Liu through its reliance on the industry
regulations.” Id.
The phrase “lodging establishment” only appears in the preamble of
claim 1, and Patent Owner’s argument presumes it is limiting. Petitioner’s
arguments for the preamble that “Liu discloses a single serving beverage
maker 8” and “Liu in view of relevant hospitality industry regulations
teaches the limitations” indicate that Petitioner also considers the preamble
as limiting. See Pet. 23. Petitioner cites column 1, lines 58–59 of Liu,
which describes single serving beverage maker 8, but Liu also states in
column 1, lines 59–60 that “[i]t is to be understood that beverage maker 8 is
preferably designed for use in vehicles.” Thus, the cited portion of Liu does
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not teach or suggest explicitly a “method of supplying in-room beverage
service to a lodging establishment that provides beverage dispensers in
rooms of the lodging establishment for use by . . . lodging guests.”
Also, although one asserted rationale pertains to the steps reciting
“rooms” or “room” of the lodging establishment (see Pet. 22), Petitioner’s
rationales for combining Liu, Sylvan, and Luedtke do not address directly
why these references would render obvious a “method of supplying in-room
beverage service to a lodging establishment that provides beverage
dispensers in rooms of the lodging establishment for use by . . . lodging
guests.” Id. at 21–22. Therefore, Petitioner must be relying on Liu and
“relevant hospitality industry regulations” to argue why a “method of
supplying in-room beverage service to a lodging establishment that provides
beverage dispensers in rooms of the lodging establishment for use by . . .
lodging guests” is rendered obvious. See id. at 21–23.
Petitioner’s argument regarding Liu and “relevant hospitality industry
regulations” refers to paragraphs 23–27 of the Krause Declaration (Ex.
1007) and paragraph 32 of the Slocum Declaration (Ex. 1009). Pet. 23. The
Petition merely cites the declarations and does not explain sufficiently the
significance of the declarations. See 37 C.F.R. § 42.22(a)(2). “Arguments
must not be incorporated by reference from one document into another
document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why
Liu and relevant hospitality industry regulations would render obvious the
preamble of claim 1, the citations to the Krause and Slocum Declarations
amount to incorporation by reference of arguments made in those
declarations that circumvent the page limits that apply to petitions.
37 C.F.R. § 42.24(a).
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Moreover, the cited paragraphs do not support the statement that “Liu
in view of relevant hospitality industry regulations teaches the limitations.”
Pet. 23. Paragraphs 23–27 of the Krause Declaration refer to Exhibits 1006,
1011, and 1023–1024, which are the prosecution history of the ’884 patent, a
cost analysis, and articles from Cornell Hotel and Restaurant Administration
Quarterly. Ex. 1007 ¶¶ 13 (list of exhibits), 23–27; Pet. iii–iv (list of
exhibits). Thus, the cited paragraphs of the Krause Declaration do not
discuss the combination of Liu and hospitality industry regulations.
Paragraph 32 of the Slocum Declaration cites paragraphs 14–15 of the
Krause Declaration and opines that it would have been obvious to supply
Liu’s single serving beverage maker to a lodging establishment. Ex. 1009
¶¶ 6 (list of exhibits), 32; Pet. iii–iv (list of exhibits). Thus, the citation to
the Slocum Declaration also does not discuss the combination of Liu and
hospitality industry regulations. Exhibits 1015–1018, which are not
referenced in either declaration, are county and state regulations. Ex. 1007
¶ 13; Ex. 1009 ¶ 6; Pet. iii–iv. Thus, the cited paragraphs of the Krause and
Slocum Declarations fail to argue how Liu in view of relevant hospitality
industry regulations teach the preambles of claims 16 and 29.
Finally, as Patent Owner notes, the first-filed Petition stated that “[i]t
was well known at the time of the invention that such single serving
beverage makers were supplied in hotel rooms for a plurality of different
hotel guests.” Paper 1, 22 (citing Ex. 1007 ¶¶ 23–27; Ex. 1009 ¶ 32). The
subsequently filed, corrected Petition changed the statement to “[i]n
addition, Liu in view of relevant hospitality industry regulations teaches the
limitations.” Pet. 23. Without deciding the propriety of the change, we
perceive this change to be an attempt to identify references relied upon in the
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cited portions of the Krause and Slocum Declarations; however, as discussed
above, hospitality industry regulations are not referenced in the cited
portions of the declarations.
Thus, for claim 1 and its dependent claims 2–15, 42, 45, 48, and 51,
we determine that the information presented in the Petition does not show
that there is a reasonable likelihood that Petitioner would prevail with
respect to at least one of these claims.
2. Claims 16–41, 43, 44, 46, 47, 49, 50, 52, and 53
Independent claim 16 recites “[a] method of supplying in-room
beverage service to a lodging establishment,” and independent claim 29
recites “[a] method of supplying in-room beverage service to a lodging
establishment, the lodging establishment having at least one room that
contains a single beverage dispenser for in-room use by a plurality of
different lodging guests.”
For each of these recitations, Petitioner states only that “Liu in view
of relevant hospitality industry regulations teaches this limitation (see claim
1[preamble] above).” Pet. 28, 32–33. For the reasons discussed above in
connection with the preamble of claim 1, we determine that the information
presented in the Petition does not show that there is a reasonable likelihood
that Petitioner would prevail with respect to at least one of independent
claims 16 and 29 and their dependent claims 17–28, 30–41, 43, 44, 46, 47,
49, 50, 52, and 53.
B. Obviousness of Claims 1–53 over Bixby, Sylvan, and Luedtke
Petitioner argues that claims 1–53 are unpatentable under 35 U.S.C.
§ 103 over Bixby, Sylvan, and Luedtke, referring to disclosures in the
references and a claim chart. Pet. 5, 38–56. Petitioner also relies on the
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Krause Declaration (Ex. 1007) and the Slocum Declaration (Ex. 1009). Id.
at 5.
Patent Owner responds that the “petition’s analysis for the proposed
Bixby ground is similar to its analysis for the proposed Liu ground” and
“fails to identify where at least the lodging establishment limitations of
independent claims 1, 16, and 29 are found in Bixby, Sylvan, and Luedtke.”
Prelim. Resp. 8, 9.
The phrase “lodging establishment” is found only in the preamble of
claim 1, the preamble and one step of claim 16, and the preamble of claim
29. For the preamble of claim 1, the Petition argues that “Bixby discloses a
chassis 10” and that “Bixby in view of relevant hospitality industry
regulations teaches this limitation.” Pet. 41 (citing Ex. 1005, Fig. 1; Ex.
1007 ¶¶ 23–27; Ex. 1009 ¶¶ 9, 55). For the preambles of claims 16 and 29,
the Petition argues “Bixby in view of relevant hospitality industry
regulations teaches this limitation” and states “see claim 1[preamble]
above.” Pet. 46–47, 50. Also, Petitioner’s asserted rationales for combining
Bixby, Sylvan, and Luedtke are similar to the rationales asserted for
combining Liu, Sylvan, and Luedtke. See id. at 21–22, 39–41. Petitioner
additionally argues that “a change in size, for example, modifying Bixby
from a multi-cup beverage maker to a single-serving beverage maker, would
have been an obvious design choice.” Id. at 39–40. Thus, Petitioner’s
citation to Bixby and Petitioner’s rationales do not address expressly the
phrase “lodging establishment” in claims 1, 16, and 29.
Petitioner’s argument regarding Bixby and “relevant hospitality
industry regulations” refers to paragraphs 23–27 of the Krause Declaration
(Ex. 1007) and paragraph 55 of the Slocum Declaration (Ex. 1009). Pet. 23.
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As with the argument that Liu, Sylvan, and Luedtke render obvious the
preamble of claim 1, the Petition merely cites the declarations and does not
explain sufficiently the significance of the cited portions of the declarations.
See 37 C.F.R. § 42.22(a)(2) (requiring the Petition itself to contain “a full
statement of the reasons for the relief requested”). Thus, for the reasons
discussed above for the combination of Liu, Sylvan, and Luedtke, without a
sufficient explanation why Bixby and relevant hospitality industry
regulations would render obvious the preambles of independent claims 1, 16,
and 29, the citations to the Krause and Slocum Declarations amount to an
incorporation by reference of arguments made in those declarations that
circumvents the page limits that apply to petitions. 37 C.F.R. § 42.24(a).
The cited portions of the declarations also suffer from the same deficiencies
discussed above for Liu, Sylvan, and Luedtke.
Thus, we determine that the information presented in the Petition does
not show that there is a reasonable likelihood that Petitioner would prevail
with respect to at least one of claims 1–53 as unpatentable over Bixby,
Sylvan, and Luedtke.

III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated there is a
reasonable likelihood it would prevail in showing the unpatentability of at
least one of the challenged claims.

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.
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PETITIONER:
William S. Foster, Jr.
Kassity Y. Liu
Tina J. Yang
BAKER BOTTS LLP
william.foster@bakerbotts.com
kassity.liu@ bakerbotts.com
tina.yang@ bakerbotts.com

PATENT OWNER:
Robert L. Burns
Joshua L. Goldberg
David C. Reese
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
robert.burns@finnegan.com
joshua.goldberg@finnegan.com
david.reese@finnegan.com