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

Patent Trial and Appeal Board

Feb 24, 2016

10942766 (P.T.A.B. Feb. 24, 2016)

Trials@uspto.gov Paper 49
571-272-7822 Entered: February 24, 2016

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 IPR2014-01257
Patent 7,311,037 B2
____________

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

JUNG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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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
1–29 of U.S. Patent No. 7,311,037 B2 (Ex. 1001, “the ’037 patent”).
Courtesy Products, LLC (“Patent Owner”) timely filed a Preliminary
Response. Paper 10. Based on these submissions, we instituted inter partes
review of claims 1–5, 8–18, 20–25, and 27–29 of the ’037 patent. Paper 14
(“Dec. on Inst.”).
After institution, Patent Owner filed a Response (Paper 22, “PO
Resp.”), and Petitioner filed a Reply (Paper 33, “Reply”). Petitioner
proffered a Declaration of Kurt J. Krause (Ex. 1007, “Krause Declaration”)
and a Declaration of Alexander H. Slocum (Ex. 1009, “Slocum
Declaration”) with its Petition. Patent Owner proffered the Declaration of
Alan D. Ball. (Ex. 2004, “Ball Declaration”) with its Response. Also, a
deposition transcript was filed for Mr. Ball (Ex. 1025).
Patent Owner moves to seal certain portions of its Response and
Exhibit 2018. Paper 21. Petitioner moves to exclude the Ball Declaration
and Exhibits 2002, 2007–2011, and 2013–2018. Paper 35.
A combined oral hearing in this proceeding and Case IPR2014-01258
was held on December 2, 2015; a transcript of the hearing is included in the
record (Paper 48).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–5, 8–18, 20–25, and 27–29 of
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the ’037 patent are unpatentable. We also grant Patent Owner’s motion to
seal and deny Petitioner’s motion to exclude.
A. Asserted Ground of Unpatentability
We instituted inter partes review on the sole ground that, under 35
U.S.C. § 103, claims 1–5, 8–18, 20–25, and 27–29 are unpatentable over
Liu1, Sylvan2, and Luedtke3
B. Related Proceedings
The ’037 patent is the subject of Courtesy Products, LLC v. Hamilton
Beach Brands, Inc., 1:13-cv-02012-SLR (D. Del.). Pet. 2; Paper 6, 2.
The ’037 patent is also related to the patent that is the subject of inter
partes review in Case IPR2014-01258. Pet. 2–3; Paper 6, 2.
C. The ’037 Patent (Ex. 1001)
The ’037 patent relates to a “single-use, disposable brew basket for an
electric coffee maker.” Ex. 1001, 1:10–12. Figure 1 of the ’037 patent is
reproduced below.

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).
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Figure 1 is a perspective view of an electric coffee brewing machine.
Id. at 3:10–11. Electric coffee machine 10 “is similar to other conventional
drip-type electric coffee brewing machines” and includes basket-receiving
recess 16 and brew basket 18. Id. at 3:47–55. Figure 2 of the ’037 patent is
reproduced below.

Figure 2 is a perspective view of a disposable brew basket. Id. at
3:12–13. Disposable brew basket 40 is shaped to fit within basket-receiving
recess 16 instead of brew basket 18. Id. at 4:8–11.
Claims 1 and 27–29 are the independent claims challenged by the
Petition, and claim 1 is reproduced below:
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1. A beverage brewing system, comprising:
a beverage brewing machine having a housing, a water
reservoir, an electrical heating element for heating water and a
location to receive a brew basket, the brewing machine heating
water from the water reservoir;
a plurality of filter packs for use with the beverage
brewing machine, each filter pack containing an amount of
grinds sufficient to brew approximately only a single serving of
brewed beverage; and
a plurality of single serving disposable brew baskets for
use with the beverage brewing machine, the brew baskets being
inserted into the location in the beverage brewing machine,
the brew baskets 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
non-collapsible 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 brewing machine,
the wall of the brew 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 brewing operation,
the brewing reservoir being sufficiently large to hold at
least 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; and
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a first package including at least one of the brew baskets
and a second package including at least one of the filter packs,
the first and second packages being separate from one another.

II. 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). Only those terms in controversy need to be construed, and only to
the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
Petitioner proposes constructions for “single serving disposable brew
baskets,” “non-collapsible,” and “brewing reservoir”4 (Pet. 16–19), but
Patent Owner does not propose interpretations for any term (see Prelim.
Resp.; PO Resp.).
In our Decision to Institute, we determined that no claim terms
required construction. Dec. on Inst. 5–6. Based on our review of the
complete record, we determine that no claim term requires express
construction for the purposes of this decision.

III. CHALLENGE BASED ON LIU, SYLVAN, AND LUEDTKE
To prevail in its challenge of claims 1–5, 8–18, 20–25, and 27–29 as
unpatentable over Liu, Sylvan, and Luedtke, Petitioner must prove

4 See Paper 12 (granting Joint Stipulation to change the Petition’s proposed
claim construction of “brewing reservoir”).
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unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37
C.F.R. § 42.1(d).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). To establish obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. See CFMT, Inc. v.
Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490
F.2d 981, 985 (C.C.P.A. 1974).
A patent claim composed of several elements, however, is not proved
obvious merely by demonstrating that each of its elements was known,
independently, in the prior art. KSR, 550 U.S. at 418. For an obviousness
analysis, it is important to identify a reason that would have prompted one of
skill in the art to combine prior art elements in the way the claimed
invention does. Id. Obviousness can be established when the prior art,
itself, would have suggested the claimed subject matter to a person of
ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
A. Liu (Ex. 1002)
Liu describes a single serving beverage maker. Ex. 1002, Abstract.
Figure 1 of Liu is reproduced below.
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Figure 1 is a perspective view of an embodiment of the single serving
beverage maker. Id. at 1:34–36. Single serving beverage maker 8 includes
base housing 10, water storage reservoir 20, and brewing compartment 30.
Id. at 1:57–67. Support basket 162 of brewing compartment 30 can be used
to retain ground coffee. Id. at 3:3–8, Fig. 2. Liu also describes that “[i]n
operation, if it is desired to brew one cup of coffee, . . . the desired amount
of coffee is placed in the brewing reservoir . . . in a prefilled, porous bag 24,
similar to a conventional teabag.” Id. at 4:34–37.
B. Sylvan (Ex. 1003)
Sylvan “relates to an imperforate beverage filter cartridge which is
adapted to hermetically contain a beverage extract and which is yieldably
pierceable, both to accommodate an injection of liquid into the cartridge for
combination with the extract to produce a beverage, and to accommodate an
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outflow of the beverage.” Ex. 1003, 1:14–19. Figure 1 of Sylvan is
reproduced below.

Figure 1 depicts an exploded view of the beverage filter cartridge. Id.
at 2:48–50. Beverage filter cartridge 10 includes pierceable hollow base 12,
filter element 14 that stores extract 38 of the beverage to be made, such as
coffee, and pierceable cover 16. Id. at 2:66–3:2, 3:36–39. Sylvan describes
that the filter cartridge “can be disposed of after a single use.” Id. at 1:49–
51.
C. Luedtke (Ex. 1004)
Luedtke relates “to a throw-away device adapted to instantly drip
brew a single cup of coffee.” Ex. 1004, 1:36–38. Figure 1 of Luedtke is
reproduced below.
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Figure 1 depicts an exploded perspective view of a disposable drip
brewing device. Id. at 2:39–42. The disposable drip brewing device
includes “nested filter cups 2 and 4 defining a chamber containing a
measured quantity of ground coffee 6.” Id. at 2:54–57. Luedtke also
describes that the devices “may be individually packaged in a packet 23 of
air tight material such as metallic foil.” Id. at 3:40–42.
D. Independent Claims 1 and 27–29
Petitioner argues that independent claims 1 and 27–29 are
unpatentable under 35 U.S.C. § 103 over Liu, Sylvan, and Luedtke, referring
to disclosures in the references and a claim chart. Pet. 4, 19–25, 31–34.
Petitioner also relies on the Krause Declaration (Ex. 1007) and the Slocum
Declaration (Ex. 1009). Id. at 4. For independent claims 27–29, Petitioner
relies on its arguments for claim 1. Id. at 31–34.
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Petitioner argues that Liu teaches or suggests all the limitations of
claim 1 except for those related to “a plurality of filter packs,” “a plurality of
single serving disposable brew baskets,” the construction of the brew
baskets, and separate first and second packages for the brew baskets and
filter packs. Pet. 23–25 (citing Ex. 1002, 1:57–2:10, 2:17–21, 3:5–6, 3:9–
15, 3:42–51, 4:34–38, Figs. 1–2; Ex. 1007 ¶¶ 28–29; Ex. 1009 ¶¶ 25, 27–33,
40, 46–50).
For “a plurality of filter packs for use with the beverage brewing
machine, each filter pack containing an amount of grinds sufficient to brew
approximately only a single serving of brewed beverage,” Petitioner relies
on Liu in combination with Luedtke. Id. at 23–24. In particular, Petitioner
relies on Liu for teaching or suggesting prefilled porous bags 24 and
Luedtke for teaching or suggesting a filter device 3 that can be thrown away
after a single use. Id. (citing Ex. 1002, 4:34–38; Ex. 1004, 1:37–38, 1:61–
62, 2:54–57, Fig. 3; Ex. 1007 ¶¶ 28–29; Ex. 1009 ¶¶ 28–29, 40, 46–50).
Petitioner argues that “combining Liu, Sylvan, and Luedtke demonstrates
that all the elements in the ’037 Patent were known in the prior art, and their
combination yielded nothing but predictable results.” Id. at 21–22 (citing
Ex. 1009 ¶¶ 42–50). Patent Owner does not present any specific arguments
regarding these limitations of claim 1.
A person of ordinary skill in the art “is not an automaton,” and would
have recognized the sanitary benefit of combining Lui’s pre-filled porous
coffee bags with Luedkte’s disposable filter—a combination suggested by
Sylvan’s single-service coffee beverage filter cartridge. KSR, 550 U.S. at
421. Based on the full record before us, therefore, we agree with Petitioner
that the cited portions of Liu, Sylvan, and Luedtke teach or suggest the
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limitations of claim 1 described above and similar limitations recited by
independent claims 27–29. We address below the remaining limitations of
independent claims 1 and 27–29.
1. “a plurality of single serving disposable brew baskets for use
with the beverage brewing machine”
For limitations regarding the plurality of single serving disposable
brew baskets having a bottom and a wall formed with a disposable, rigid,
non-collapsible, one-piece construction, Petitioner relies on Sylvan for
teaching or suggesting “a plurality of cartridges 10, each having a base 12,
that ‘can be disposed of after a single use’” and that “‘may be made of
polystyrene, ethylene vinyl alcohol, and polyethylene.’” Pet. 24 (citing Ex.
1003, 1:49–51, 2:32–33). In addition to arguing that “combining Liu,
Sylvan, and Luedtke demonstrates that all the elements in the ’037 Patent
were known in the prior art, and their combination yielded nothing but
predictable results” (id. at 21–22 (citing Ex. 1009 ¶¶ 42–50)), Petitioner
argues:
modifying Liu according to the teachings of Sylvan would have
involved a simple substitution of one known element (i.e., Liu’s
reusable support basket 162) for another (i.e., Sylvan’s base 12
of disposable cartridge 10) to obtain the predictable result of a
disposable, non-collapsible, and rigid brew basket that can result
in substantial cost savings to a hotel and increased user
satisfaction of hotel guests.

Id. at 22 (citing Ex. 1009 ¶¶ 43–44).
For the disposable brew basket limitation as recited by claim 1, Patent
Owner states that “[i]ndependent claims 27–29 recite similar features.” PO
Resp. 20. Patent Owner also responds that “substitution of Liu’s reusable
support basket 162 for Sylvan’s base 12 “is anything but ‘simple’ and
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obvious,” “would require fundamentally changing the basic principles under
which the Liu system operates,” “would render the Liu system inoperable
for its intended purpose,” and “would not satisfy the ‘port’ limitations of the
claims” because “Sylvan does not have any opening on the bottom of its
impermeable, imperforate, yieldably pierceable disposable base 12.” PO
Resp. 20–30 (citing Ex. 1002, 2:6–13, 2:43–58, 2:66–3:26, 3:30–39, 3:42–
46, 4:24–27, 4:31–34, Figs. 2–5; Ex. 1003, 1:49–52, 2:66–3:20, 3:49–56,
4:16–27, Fig. 4; Ex. 2004 ¶¶ 38–41, 44–46, 48, 49, 58, 59, 66; Ex. 2005,
585, 865).
After considering the full record before us, we agree with Petitioner
that Liu teaches a single serve brew basket. Pet. 20; Ex. 1002, 1:67–2:2 (“It
is to be understood that the beverage maker 8 is sized throughout to only
make or brew a single serving at a time”); Ex. 1009 ¶¶ 27, 28, 42; Ex. 2004
¶ 37 (“The ’191 (Liu) patent describes a single serve drip coffeemaker
system which utilizes a multiple serving water reservoir in combination with
a single serving measuring reservoir to brew and dispense successive single
servings of cups of coffee without the need to replenish the water reservoir
after each cup brewed.”). Liu also teaches that “infused water exits through
discharge opening 164 into underlying cup 98.” Ex. 1002, 3:12–13; Ex.
1009 ¶ 31; Ex. 2004 ¶ 38.
We also agree with Petitioner that Sylvan teaches that its cartridge 10
can be disposed of after a single use. Pet. 24; Ex. 1003, 1:49–51 (“It is a
further object of this invention to provide an improved beverage filter
cartridge which is simple and has very few parts so it can be disposed of
after a single use.”); Ex. 1009 ¶¶ 36, 42; Ex. 2004 ¶ 41 (“After use, the
entire beverage filter cartridge is removed from the machine and discarded
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as a whole”). We, thus, determine that a single server brew basket and a
disposable cartridge were known in the prior art. Pet. 21–22.
We also determine that Sylvan teaches an imperforate cartridge
adapted to hermetically contain a beverage extract. Ex. 1003, 1:14–16, 2:8–
17; see also PO Resp. 24 (describing Sylvan). We determine that Sylvan
teaches “[b]oth the cover and base are yieldably piercable, the cover to
accommodate an injection of liquid into the first chamber for combination
with the extract to produce a beverage, and the base to accommodate the
outflow of the beverage from the second chamber.” Ex. 1003, 2:17–21; see
also PO Resp. 24 (describing Sylvan); Ex. 2004 ¶ 41. We agree with Patent
Owner’s expert that Sylvan’s “cartridge is designed as a stand-alone
hermetically sealed food package for the beverage extract.” Ex. 2004 ¶ 41
(citing Ex. 1003, 3:48–56, Figs. 4, 5). We also agree with Patent Owner’s
expert that, to make a beverage, Sylvan’s “cartridge base is also pierced to
allow the beverage to drain from the cartridge.” Ex. 2004 ¶ 41 (citing Ex.
1003, 3:15–17, 4:24–27). Thus, we determine that one of ordinary skill in
the art would understand Sylvan’s cartridge, when unpierced, provides a
hermetically sealed food package for a beverage extract, and when pierced,
allows a beverage made from the extract to drain.
In view of these teachings of Sylvan and the full record before us, we
agree with Petitioner that combining Liu, Sylvan, and Luedtke demonstrates
that all the elements were known in the prior art, and their combination
yielded nothing but predictable results. Pet. 21–22. As discussed above, we
determine that Liu and Sylvan demonstrate that single serve brew baskets,
brew baskets with an opening for dripping infused beverage, and disposable
cartridges that, when pierced, make a beverage from an extract were known.
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The complete record does not indicate that the combination yielded any
result that was not predictable.
In view of the teachings of Sylvan and the full record before us, we
also agree with Petitioner that Sylvan’s base 12 can be substituted for Liu’s
basket 162. Patent Owner’s arguments are based on one of ordinary skill in
the art failing to understand that Sylvan’s base must be pierced to make a
beverage from the beverage extract. See PO Resp. 20–30. We determine,
however, that one of ordinary skill in the art would understand Sylvan’s
cartridge, when pierced, allows a beverage made from the extract to drain,
thereby teaching or suggesting that the cartridge functions as a brew basket.
Moreover, one of ordinary skill in the art need only modify the
cartridge of Sylvan by providing a port. To the extent that some
modification would be required, “we do not ignore the modifications that
one skilled in the art would make to a device borrowed from the prior art.”
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
Liu indicates that providing a port to a brew basket is within ordinary skill.
See PO Resp. 23 (stating “the purpose of the opening 164 in Liu is to enable
the delivery of fresh, single servings of a heated beverage on demand”)
(citing Ex. 1002, 1:25–31; Ex. 2004 ¶ 39).
Patent Owner argues that, contrary to Petitioner’s rationale, the
material of Sylvan is not reusable, is more expensive, and is intended for
food storage, not a brew basket. Id. at 33–38 (citing Pet. 22; Ex. 1002, 3:8–
10; Ex. 1003, 1:57–59, 3:8–12; Ex. 1009 ¶ 44; Ex. 1020; Ex. 2002, 1; Ex.
2004 ¶¶ 38, 41, 47, 59; Ex. 2006, 186, 191–193, 481, 483). Patent Owner
notes that the Slocum Declaration cites the Krause Declaration in support of
“cost savings” and, further, argues that the Krause Declaration misreads the
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cost analysis from the prosecution history. Id. at 38–41 (citing Ex. 1006, 56,
63, 65, 71, 74, 82; Ex. 1007 ¶¶ 25, 26; Ex. 1009 ¶ 43; Ex. 2004 ¶¶ 58, 70,
85). These arguments are not persuasive because we determined above that
Sylvan’s cartridge is disposable and the challenged claims do not require an
inexpensive material for the recited brew baskets.
Moreover, the ’037 patent states that, “[i]n the preferred embodiment
of the invention, the disposable brew basket 40 is made of vacuum formed
high-impact polystyrene.” Ex. 1001, 4:26–28. Sylvan teaches that the “base
may be made of polystyrene, ethylene vinyl alcohol, and polyethylene,” the
“base 12 is typically formed from a polymeric laminate,” and “[o]ne
example of a base material is Product No. C150.” Ex. 1003, 2:32–33, 3:8–
10. Although Patent Owner presents evidence that Sylvan’s material is
expensive, the complete record does not indicate that polystyrene alone
provides unexpected results for the brew basket or that it is beyond ordinary
skill to select polystyrene alone for Petitioner’s combination of Liu and
Sylvan.
Patent Owner also contends that Liu teaches away from eliminating its
support basket 162 and brewing mechanisms. PO Resp. 25–26. The
argument is not persuasive because Petitioner asserts that known elements
could be combined predictably and proposes substitution, not elimination, of
support basket 162 and brewing mechanisms. See Pet. 21–22.
Patent Owner asserts that Petitioner’s motivation is hindsight
reasoning because Liu and Sylvan “fail to provide any reasonable
motivation” for Petitioner’s modification and “the system of Sylvan is very
different than the system of Liu.” Id. at 30–32 (citing Ex. 1002, 3:3–14,
3:42–46; Ex. 1003, 1:46–52, 3:15–17, 4:24–27; Ex. 2004 ¶¶ 41, 44, 58, 70,
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85). “A person of ordinary skill is also a person of ordinary creativity, not
an automaton” (KSR, 550 U.S. at 421) and it would have been a matter of
“ordinary creativity” to modify the reusable brew basket of Liu to be
disposable. As for Sylvan being different from Liu, we determine that
Sylvan is in the relevant field of endeavor and is reasonably pertinent to the
problem with which the inventor was concerned. In particular, both Sylvan
and Liu relate to single serving beverage makers. Neither reference is “too
remote to be treated as prior art.” In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985).
2. “a first package including at least one of the brew baskets and
a second package including at least one of the filter packs, the
first and second packages being separate from one another”
For the limitation regarding separate first and second packages for the
brew baskets and filter packs, Petitioner relies on Luedtke for teaching or
suggesting that filter devices 3 “‘may each be individually packaged in a
package 23 of air tight material.’” Pet. 25 (citing Ex. 1004, 3:38–42, Figs. 3,
5; Ex. 1009 ¶¶ 40–41, 46–50). In addition to arguing that “combining Liu,
Sylvan, and Luedtke demonstrates that all the elements in the ’037 Patent
were known in the prior art, and their combination yielded nothing but
predictable results” (id. at 21–22 (citing Ex. 1009 ¶¶ 42–50)), Petitioner
argues that “it would have also been obvious . . . to extend Luedtke’s
teaching of packaging of disposable articles to taking a disposable brew
basket, as taught by the combination of Liu and Sylvan, and individually
packaging the disposable brew basket . . . to yield the predictable result of a
more sanitary product protected against contamination” (id. at 22–23 (citing
Ex. 1007 ¶¶ 37–39; Ex. 1009 ¶ 48)). For independent claims 27–29,
Petitioner relies on its arguments for claim 1. Pet. 31–34.
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For the packaging limitation of claim 1 and “similar features” recited
by independent claims 27–29, Patent Owner responds that Luedtke “teaches
nothing more than the specific concept of wrapping a filter in foil,” that “the
point of wrapping the filter in foil is to prevent spoilage of the food product
inside,” and that “[o]ne of ordinary skill would not read Luedtke as teaching
providing a package for anything other than ground coffee because such
other items do not spoil and do not require freshness.” PO Resp. 3–6 (citing
Pet. 29, 31–34; Ex. 1004, Abstract, 2:70–71, 3:23–27, 3:29–31, Figs. 1, 3;
Ex. 1009 ¶¶ 49–53; Ex. 2004 ¶¶ 47, 59). Patent Owner also argues that “it
would not have been obvious to extend Luedtke’s teaching of wrapping a
filter pack in foil to meet the claimed packaging limitations” and “there is no
teaching or suggestion in Luedtke of wrapping anything other than a flexible
filter in foil.” Id. at 7–9 (citing Ex. 1004, Figs. 1, 3; Ex. 2004 ¶¶ 60, 69).
Patent Owner also asserts that “there is nothing in the other relied-upon
references (Liu or Sylvan) that lends itself to being folded in the manner
taught by Luedtke.” Id. at 9–10 (citing Ex. 1003, 3:8–10; Ex. 2002, 1; Ex.
2003, 16:10–17:2; Ex. 2004 ¶ 60).
Petitioner replies that Patent Owner “relies on the completely
unsubstantiated ‘novelty’ of packaging a non-food item . . . that comes into
contact with food.” Reply 9. Petitioner argues that “the manner of
packaging products in ‘one package, as opposed to two packages or three
packages is not a novel or patentable feature’” and that Luedtke discloses
“filter devices 3 ‘may each be individually packaged in a package 23 of air
tight material.’” Id. at 10 (quoting Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1309 (Fed. Cir. 2006); citing Ex. 1004, 3:39–42). Petitioner
reiterates its assertion that it would have been obvious to extend Luedtke’s
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teaching of packaging disposable articles to a disposable brew basket. Id.
(citing Ex. 1007 ¶¶ 38–40; Ex. 1009 ¶ 49).
On the full record before us, for the reasons discussed above, we are
persuaded that Liu, as modified by Sylvan, teaches or suggests a disposable
brew basket. The full record before us also persuades us that Luedtke
teaches or suggests the packaging limitations of independent claims 1 and
27–29.
We determine that Luedtke teaches individually packaging a
disposable filter device 3. Ex. 1004, 3:38–42 (“a plurality of the devices 3 . .
. each may be individually packaged in a packet 23”); see also Pet. 25
(“Luedtke discloses that a plurality of devices 3 ‘ . . . may each be
individually packaged.’”); Ex. 1009 ¶ 41 (“a [person having ordinary skill in
the art] would have recognized that Luedtke discloses individually
packaging at least one filter device in a package, the package being separate
from other packages (e.g., a package that includes a brew basket)”); Ex.
2004 ¶ 51 (stating that Luedtke “describes that the filter could be packaged
in an individual package or a plurality of them may be packaged in a can”).
Dr. Slocum’s statement that “the technique of individually packaging a
disposable filter device was well known in the art” is supported by
Luedtke’s express teaching that filter devices 3 “may be individually
packaged in a packet 23.” Ex. 1004, 3:39–42; Ex. 1009 ¶ 48.
We also find that Luedtke relates to “a throw-away device” or a
“disposable device.” Ex. 1004, 1:10–12, 1:36–38, 1:55–57, 1:61–63; see
also Ex. 2004 ¶ 52 (stating “Luedtke discloses a one piece inexpensive
disposable device that allows the user to drip brew a cup of coffee with only
a coffee cup and hot water”) (citing Ex. 1004, 4:26–30).
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We are persuaded that, in view of Luedtke’s express teaching that
disposable filter devices 3 “each may be individually packaged in a packet
23” (Ex. 1004, 3:38–42), one of ordinary skill in the art at the time of the
invention would have modified Liu and Sylvan to package individually a
disposable brew basket to obtain a “more sanitary product protected against
contamination,” as argued by Petitioner. Pet. 22–23 (citing Ex. 1007 ¶¶ 37–
39; Ex. 1009 ¶ 48). Patent Owner’s expert acknowledges that separate
packaging is used to prevent contamination but states that separate
packaging is only for items that directly contact a person’s mouth and
increases cost. Ex. 2004 ¶ 63 (“[s]eparate packaging is also used to prevent
contamination of items that come into direct contact with a user’s mouth,
such as a straw or cutlery”). A preponderance of the evidence supports a
finding, therefore, that one of ordinary skill in the art would have considered
contamination when contemplating separate packaging. See Pet. 22–23; Ex.
1009 ¶ 48; Ex. 2004 ¶ 63).
We are persuaded that the full record before us supports Petitioner’s
assertion that one of ordinary skill would have extended Luedtke’s teaching
of individually packaging “disposable” or “throw-away” filter devices 3 to a
disposable brew basket. Paragraph 48 of the Slocum Declaration states, and
we agree, that “modifying the combination of Liu and Sylvan according to
the teachings of Luedtke would have used a known technique to improve
similar devices in the same way” and thus, “it would have been obvious . . .
to extend Luedtke’s known technique to also individually packaging a
disposable brew basket (i.e., a similarly disposable component to be used
with a single-serving beverage machine), as taught by Liu and Sylvan,
separate from any other components.” We agree that Luedtke teaches
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individually packaging filter devices that are disposable like the brew basket
of Liu, as modified by Sylvan. Pet. 25; Ex. 1004, 3:38–42.
Patent Owner’s arguments require that we determine that one of
ordinary skill in the art would understand Luedtke only for its express
teachings and that the teachings of Luedtke cannot be applied beyond its
filter device 3. PO Resp. 4–9. However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
The full record before us provides no persuasive reason to determine that
extending the individual packaging of disposable filters, as taught by
Luedtke, to a disposable brew basket was beyond ordinary skill in the art.
Also, Petitioner provides “an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 417–418.
Petitioner asserts that Liu, Sylvan, and Luedtke would be combined to result
in a “more sanitary product protected against contamination.” See Pet. 25.
We find that Petitioner’s articulated reasoning has rational underpinning
because the full record before us indicates that, as discussed above,
individual packaging of disposable filter devices was known and
contamination was a consideration for individual packaging. See Pet. 25;
Ex. 1004, 3:39–42; Ex. 2004 ¶ 63. We are therefore satisfied that Petitioner
provides “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” KSR, 550 U.S. at 418.
Patent Owner also argues that packaging of disposable articles is not a
routine expedient or step. PO Resp. 10. The argument, however, fails to
persuade us that one of ordinary skill would not have extended Luedtke’s
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known technique to disposable brew baskets. See Pet. 25. Patent Owner’s
remaining arguments, regarding hospitality industry regulations advanced by
Petitioner, are also not persuasive because we do not rely on those
hospitality industry regulations in our analysis, given that no showing has
been made that a skilled artisan would have been cognizant of the
regulations. See PO Resp. 11–19 (citing Pet. 23; Ex. 1007 ¶¶ 3, 8, 20, 21,
29, 30, 35, 39–42, 44; Ex. 1009 ¶¶ 1, 8, 10–12, 43; Exs. 1015–1018; Ex.
2003, 8–9, 14:1–16, 18:2–21, 23:17–24:21; Ex. 2004 ¶¶ 70, 77, 79).
For the reasons explained above, we determine that Petitioner has
shown by a preponderance of the evidence that the elements of claims 1 and
27–29 are taught by Liu, Sylvan, and Luedtke, and Petitioner provides
articulated reasoning with rational underpinning for its proposed
combination to support a conclusion of obviousness.
E. Dependent Claims 2–5, 8–18, and 20–25
Claims 2–5, 8–18, and 20–25 depend from claim 1, and Petitioner
argues Liu teaches or suggests the limitations of claims 2–5, 8, 10–13, 15,
and 20–22. Pet. 25–30 (citing Ex. 1002, 1:63–2:2, 2:13–15, 3:4–6, 3:9–13,
4:34–37, Fig. 2; Ex. 1009 ¶¶ 75–78, 80, 82–85, 87, 90, 92–94). Petitioner
also argues that Liu and Sylvan teach or suggest the limitations of claims 9,
14, 17, 18, and 23–25. Pet. 27, 28–29, 30 (citing Ex. 1003, 1:49–51, 2:32–
33, 4:16–19, Fig. 4; Ex. 1009 ¶¶ 42–45, 65–69, 86, 89, 90, 95–97).
Petitioner further argues that Liu, Sylvan, and Luedtke teach or suggest the
limitations of claim 16. Pet. 28 (citing Ex. 1009 ¶ 88).
The Patent Owner Response provides no arguments specifically for
these claims, other than those addressed above for claim 1, from which they
depend. For the reasons stated above, Patent Owner’s arguments do not
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persuade us that Petitioner fails to show that claim 1 is unpatentable over
Liu, Sylvan, and Luedtke.
Based on the full record before us, we determine that Petitioner has
shown by a preponderance of the evidence that the limitations of dependent
claims 2–5, 8–18, and 20–25 are taught or suggested by Liu, either alone or
in combination with at least one of Sylvan and Luedtke, and Petitioner
provides articulated reasoning with rational underpinning for combining Liu
with Sylvan and Luedtke to support a conclusion of obviousness. See Pet.
25–30. We adopt Petitioner’s contentions as our findings with regard to the
obviousness of these claims because the cited portions of the references
reasonably support Petitioner’s assertions that the elements of these claims
were known and Petitioner’s reason that would have prompted one of skill in
the art to combine prior art elements in the way of these claims.
F. Objective Indicia of Non-Obviousness
Factual inquiries for an obviousness determination include secondary
considerations based on objective evidence of non-obviousness. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966). Notwithstanding what the
teachings of the prior art would have suggested to one of ordinary skill in the
art at the time of the invention, the totality of the evidence submitted,
including objective evidence of non-obviousness, may lead to a conclusion
that the challenged claims would not have been obvious to one of ordinary
skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
Secondary considerations may include any of the following: long-felt
but unsolved needs, failure of others, unexpected results, commercial
success, copying, licensing, and praise. See Graham, 383 U.S. at 17;
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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
To be relevant, evidence of non-obviousness must be commensurate
in scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). In that regard, in order
to be accorded substantial weight, there must be a nexus between the merits
of the claimed invention and the evidence of secondary considerations. In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining non-obviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of
producing evidence showing a nexus lies with the patent owner. Id.;
Prometheus Labs, Inc. v. Roxane Labs, Inc., 805 F.3d 1092, 1101–02 (Fed.
Cir. 2015).
1. Commercial Success
Patent Owner provides arguments and evidence that Courtesy’s CV1
Program “embodies at least claim 27” and [i]ts tremendous success is rooted
in its disposable brew baskets.” PO Resp. 41–48 (citing Ex. 1006, 548–559;
Ex. 2004 ¶¶ 87–92; Exs. 2007–2008; Ex. 2018 ¶¶ 1, 2, 4–6, 18). Petitioner
replies that Patent Owner has failed to establish a nexus between the claimed
invention and commercial success because the claimed disposable brew
baskets are not novel and were found in the prior art during prosecution.
Reply 15–16 (citing Reply 4–8; Ex. 1006, 40–41).
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Evidence of commercial success “is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.,
463 F.3d at 1311–12. To establish a proper nexus between a claimed
invention and the commercial success of a product, a patent owner must
offer “proof that the sales [of the allegedly successful product] were a direct
result of the unique characteristics of the claimed invention—as opposed to
other economic and commercial factors unrelated to the quality of the
patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Patent Owner states that the “Program includes a plurality of filter
packs, an example of which is shown below as it is sold in a package with a
disposable brew basket.” PO Resp. 43 (citing Ex. 2004 ¶ 90). Because
Patent Owner’s evidence shows filter packs sold in a package with a
disposable brew basket, we determine that Patent Owner’s arguments and
evidence of commercial success do not show a nexus to independent claim
28, which recites “a package including at least one of the brew baskets
separate from the filter packs,” and independent claim 29, which recites
“packages that individually package each of the br[e]w baskets separate
from one another and separate from the filter packs.”
Independent claim 27 recites “a sealed package containing a single
disposable brew basket.” Patent Owner does not extend explicitly its
arguments and evidence to claim 1. See PO Resp. 41–48. Considering
Patent Owner’s arguments and evidence as to how its CV1 Program meets
the limitations of claim 27 and how substantial sales are based on its
disposable brew baskets (PO Resp. 42–45), we are not persuaded by
Petitioner’s arguments that Patent Owner has failed to establish a nexus
(Reply 15–16). Petitioner does not explain why the CV1 Program fails to
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embody the claimed features or what claimed features are missing. Even
though Patent Owner’s evidence establishes a nexus between the
commercial success of its CV1 Program and the recited disposable brew
baskets, Patent Owner has failed to demonstrate that “the asserted
commercial success of the product [is] due to the merits of the claimed
invention beyond what was readily available in the prior art.” See J. T.
Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir.
1997) (emphasis added). As discussed above, the full record after trial
establishes that disposable brew baskets recited in claims 1 and 27 were
taught in the prior art. Further, Patent Owner’s arguments and evidence
focus on this single element of its claimed invention, and Patent Owner does
not identify any evidence indicating that the claimed disposable brew
baskets or any other claimed feature had unique properties or advantages
beyond those found in the prior art relied on by Petitioner.
Based on the full record, we determine that Patent Owner’s evidence
for the secondary consideration of commercial success does not weigh
against finding the challenged claims obvious in view of Liu, Sylvan, and
Luedtke.
2. Copying
Patent Owner argues Petitioner “copied the disposable brew baskets in
Courtesy’s CV1® Program,” “licensed the ’037 patent,” and “again copied
the disposable brew baskets.” PO Resp. 49–50 (citing Exs. 2012, 2013,
2015, 2017; Ex. 2018 ¶ 13).
Copying, as objective evidence of non-obviousness, requires evidence
of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d
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1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004).
While Patent Owner presents evidence regarding the disposable brew
basket limitations of independent claims 1 and 27–29, Patent Owner’s
evidence of copying does not show sufficiently that Petitioner’s product is a
copy of the patented technology. See Exs. 2012, 2013, 2015, 2017. For
example, Patent Owner’s evidence does not show how Petitioner’s product
includes the packaging limitations of independent claims 1 and 27–29.
Patent Owner also has not pointed to any evidence showing that Petitioner
copied Patent Owner’s claimed invention after expending effort to develop
their own solution. See Pentec, Inc. v. Graphic Cntrls. Corp., 776 F.2d 309,
317 (Fed. Cir. 1985) (alleged copying is not persuasive of nonobviousness
when the copy is not identical to the claimed product, and the other
manufacturer has not expended great effort to develop its own solution);
Vandenberg v. Dairy Equip. Co., a Div. of DEC Int’l, Inc., 740 F.2d 1560,
1567 (Fed. Cir. 1984) (evidence of copying found particularly persuasive
where copyist had itself attempted for a substantial length of time to design a
similar device, and failed). Accordingly, we determine that Patent Owner’s
evidence for the secondary consideration of copying does not weigh against
finding the challenged claims obvious in view of Liu, Sylvan, and Luedtke.
G. Conclusion as to the Obviousness Challenge
Having considered all of the evidence and contentions of the parties
regarding the obviousness of claims 1–5, 8–18, 20–25, and 27–29, including
secondary evidence and indicia of non-obviousness presented by Patent
Owner, we determine that Petitioner has established by a preponderance of
the evidence that claims 1–5, 8–18, 20–25, and 27–29 are unpatentable over
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Liu, Sylvan, and Luedtke. The relatively weak secondary evidence of non-
obviousness is insufficient to overcome the relatively strong evidence of
obviousness presented by Petitioner. See Sud-Chemie, Inc. v. Multisorb
Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected
results and other secondary considerations will not necessarily overcome a
strong prima facie showing of obviousness”).

IV. MOTION TO SEAL
Patent Owner seeks to seal Exhibit 2018 and portions of the Patent
Owner Response that discuss Exhibit 2018. Paper 21, 2. Patent Owner also
states that the “parties have agreed to the terms of the Default Protective
Order located in Appendix B of the Trial Practice Guide.” Id. at 4.
Upon review, good cause exists to seal the above information. In
addition, the Default Protective Order will be entered. We note that none of
the sealed information was relied upon or disclosed in this Decision.
Because there is an expectation that information will be made public
where the information is identified in a final written decision, confidential
information that is subject to a protective order ordinarily would become
public 45 days after final judgment in a trial, unless a motion to expunge is
granted. 37 C.F.R. § 42.56; 77 Fed. Reg. at 48,761. In view of the
foregoing, the confidential documents filed in the instant proceeding will
remain under seal, at least until the time period for filing a notice of appeal
has expired or, if an appeal is taken, the appeal process has concluded. The
record for the instant proceeding will be preserved in its entirety, and the
confidential documents will not be expunged or made public, pending
possible appeal. Notwithstanding 37 C.F.R. § 42.56 and the Office Patent
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Trial Practice Guide, neither a motion to expunge confidential documents
nor a motion to maintain these documents under seal is necessary or
authorized at this time. See 37 C.F.R. § 42.5(b).

V. MOTION TO EXCLUDE
Petitioner moves to exclude the Ball Declaration (Ex. 2004) “because
he does not qualify as an expert either in the lodging industry or the field of
hotel management,” Exhibit 2002 “because the document is not from the
relevant time period,” and Exhibits 2007–2011 and 2013–2018 “because
they are not relevant to the patentable limitations” and “consist[] of
publications citing hearsay statements of third parties.” Paper 35, 1–2, 5, 7–
8. Patent Owner filed an opposition to Petitioner’s motion to exclude (Paper
38, “Opp.”), and Petitioner filed a reply to the opposition (Paper 39).
After considering the parties’ arguments, we find that Mr. Ball is
qualified sufficiently to testify as an expert witness “in the field of designing
coffee brewers,” as argued by Patent Owner. Opp. 5; Ex. 2004 ¶¶ 4–24. As
discussed above, we considered his testimony against the full record and
found it to be unpersuasive in some instances. We, therefore, decline to
exclude Mr. Ball’s testimony, and instead, give it appropriate weight where
it is in conflict with other evidence. See, e.g., Yorkey v. Diab, 601 F.3d
1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more
weight to one item of evidence over another “unless no reasonable trier of
fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.”).
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We also do not rely on any of Exhibits 2002, 2007–2011, and 2013–
2018. These exhibits are cited to indicate where Patent Owner finds support
for its arguments. We, thus, deny the motion to exclude.

VI. CONCLUSION
For the foregoing reasons, based on the full record before us, we are
persuaded that Petitioner has demonstrated, by a preponderance of the
evidence, that, under 35 U.S.C. § 103, claims 1–5, 8–18, 20–25, and 27–29
of the ’037 patent are unpatentable over Liu, Sylvan, and Luedtke.

VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5, 8–18, 20–25, and 27–29 of
U.S. Patent No. 7,311,037 B2 have been shown, by a preponderance of the
evidence, to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Seal is
granted;
FURTHER ORDERED that the Default Protective Order
(Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14,
2012)) is entered;
FURTHER ORDERED that the information sealed in this
Decision remain under seal, and the record preserved, until the time period
for filing a notice of appeal of this Decision has expired or, if an appeal is
taken, the appeal process has concluded;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
denied; and
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FURTHER ORDERED that, because this is a Final Written
Decision, the parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirement of 37 C.F.R.
§ 90.2.

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