Adrian Rivera v. Remington Designs, Llc

NOTICE OF MOTION AND MOTION for Summary Judgment as to Noninfringement and Invalidity

C.D. Cal.November 21, 2016

DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - i ESUP-6-0004P03 MSJ David A. Lowe (Pro Hac Vice, WSBA No. 24453) LOWE GRAHAM JONESPLLC 701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Lowe@LoweGrahamJones.com Tamany Vinson Bentz (CA Bar No. 258600) VENABLELLP 2049 Century Park East, Suite 2100 Los Angeles, CA 90067 T: 310.229.9900 F: 310.229.9901 TJBentz@Venable.com Attorneys for Defendants Eko Brands, LLC and Espresso Supply, Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA ADRIAN RIVERA, Plaintiff, v. EKO BRANDS, LLC; and ESPRESSO SUPPLY, INC., Defendants. DEFENDANTS’ NOTICE OF MOTION, MOTION FOR SUMMARY JUDGMENT AND MEMORANDUM IN SUPPORT THEREOF Date: Time: 8:30 a.m. Location: Courtroom 750 PLEASE TAKE NOTICE THAT, on , 2017 at 8:30 a.m., or as soon thereafter as counsel may be heard, in Courtroom 750 of the Honorable John A. Kronstadt, United States District Court Judge, located at 255 East Temple Street, Los Angeles, California, Defendants Eko Brands, LLC and Espresso Supply, Inc. (collectively herein “Eko”) will, and hereby does, move this Court for summary In Re: Adrian Rivera, et al. Lead Case No. LA CV16-04676 JAK (SSx) Consolidated No. 16-CV-4753 JAK (SSx) February 27, 2017 Feb. 27 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 1 of 35 Page ID #:1946 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - ii ESUP-6-0004P03 MSJ judgment of non-infringement and invalidity of U.S. Patent Nos. 9,232,871 (“the 871 patent”) and 9,232,872 (“the 872 patent”) (“patents-in-suit”). This motion is made on the grounds, more fully set forth in the accompanying memorandum, that there are no genuine issues of material fact precluding summary judgment on each of the following bases: (a) Eko products cannot infringe the patents-in-suit because they do not have the required “passageway,” as found in a recent claim construction and summary judgment of noninfringement issued in Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc. et al., Case No. 15-cv- 522RSL involving the related parent patent, U.S. Patent No. 8,720,320; (b) Eko products cannot infringe the asserted 871 patent claims and claims 13, 19 and 31 of the 872 patent because the Eko mesh filter is formed as part of the receptacle, and is not “configured to be disposed within the receptacle” as these claims require; (c) to the extent Eko’s accused products could be held to infringe any claims, they necessarily anticipate and invalidate those same claims because Eko’s accused products (and those of another, Solofill, LLC) were created, publicly disclosed, offered for sale and/or sold more than a year prior to Plaintiff’s 2012 filing dates; and (d) the claims of the 871 patent are invalid for lacking written description in accordance with 35 U.S.C. § 112 based on the claim limitation “a container… adapted to hold brewing material”—on the same basis that the claims of the parent 320 patent were found invalid by the International Trade Commission (“ITC”) in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing the Same, 337-TA-929. This motion is based upon this notice, memorandum in support thereof, accompanying statement of uncontroverted facts, the Declarations of Mark Staudacher, Jim Amundsen, Brian Findley, Laura J. Sommers, Christopher Legler and David A. Lowe, and exhibits to these declarations, all pleadings, records and papers on file in this action, such matters of which this Court may take judicial Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 2 of 35 Page ID #:1947 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - iii ESUP-6-0004P03 MSJ notice, and upon such other evidence and oral argument as may be considered by the Court before or at the hearing on this Motion. This motion is made following the conference of counsel pursuant to L.R. 7-3, which took place on October 3, 2016. RESPECTFULLY SUBMITTED this 8th day of November, 2016. s/David A. Lowe (Pro Hac Vice) LOWE GRAHAM JONESPLLC 701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Lowe@LoweGrahamJones.com Attorneys for Defendants Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 3 of 35 Page ID #:1948 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - iv ESUP-6-0004P03 MSJ TABLE OF CONTENTS I. INTRODUCTION ......................................................................................... 1 II. FACTUAL BACKGROUND AND ARGUMENT SUMMARY .............. 2 A. Eko and its Innovative Products ............................................................ 2 B. Prior Third Party Development of Podless, Integrated Filter Cartridges ...................................................................................... 4 C. Plaintiff’s Claimed Inventions to its Pod-Based Cartridges ................................................................................................. 5 D. Plaintiff’s Copying of Eko and Third Party Integrated Filter Cartridges ...................................................................................... 6 E. Plaintiff’s Earliest Priority Date is the Filing Date of the Patents-in-Suit .......................................................................................... 6 F. Washington Court Claim Construction and Noninfringement Judgment .................................................................... 7 G. ITC Conclusion of 35 U.S.C. § 112 Patent Invalidity .......................... 7 II. ARGUMENT .................................................................................................. 8 A. Eko’s Accused Products do not Infringe Any Asserted Claims ....................................................................................................... 8 1. Washington Judgment Controls for Missing “Passageway” Limitation ............................................................... 9 2. The Accused Products Lack “Passageway” and Do Not Infringe .................................................................................. 12 3. Accused Products Do Not Include a Mesh Filter “disposed within the receptacle” ................................................. 14 B. Patents-in-Suit are Invalid as Anticipated is Accused Products Infringe ................................................................................... 17 1. Parent Patents Must Provide Support for Entire Claimed Invention ........................................................................ 17 2. The CIP Patents-in-Suit are not Entitled to Parent Priority .......................................................................................... 18 3. The Ekobrew/Solofill Products Constitute Prior Art .................. 23 4. The Ekobrew and Solofill Products Invalidate all Asserted Claims ............................................................................ 23 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 4 of 35 Page ID #:1949 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - v ESUP-6-0004P03 MSJ C. Claims of the 871 Patent Are Invalid for Lack of Written Description ............................................................................... 24 IV. CONCLUSION ............................................................................................ 25 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 5 of 35 Page ID #:1950 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - vi ESUP-6-0004P03 MSJ TABLE OF AUTHORITIES CASES A. B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed. Cir. 1983) .............................................................................................................................. 10 Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016) .................................................................................................... 15 Amgen, Inc. v. Genetics Inst., Inc., 98 F.3d 1328 (Fed. Cir. 1996) .............................................................................................................................. 10 Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) .............................................. 8 Andrian Rivera v. Solofill, LLC, No. 16-cv-4706JAK-SS ......................................... 1 Arpin v. Santa Clara Valley Transp. Agency, 261 F.3d 912 (9th Cir. 2001) ........................................................................................................ 8 Blonder-Tongue Laboratories, Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971) .................................................................................................... 11 Catanzaro v. Fannon/Courier Corp., 745 F.2d 651 (Fed. Cir. 1984) .................................................................................................... 11 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) .......................................................... 8 Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011) ....................................................................................................................... 8 CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146 (Fed. Cir. 1997) ....................................................................................................................... 9 Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc. et al., Case No. 15-cv-522RSL .................................................................................. 1 Ethicon Endo-Surgey, Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998) ...................................................................................................... 8 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ............................................................................................................. 14 Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350 (Fed. Cir 2005) .................................................................................................... 9, 13, 16 Fuji Photo Film Co. Ltd. v. Jazz Photo Corp. Inc., 173 F. Supp 2d 268 (D.N.J. 2001) ............................................................................................ 25 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 6 of 35 Page ID #:1951 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - vii ESUP-6-0004P03 MSJ Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) ..................................................................................................................... 24 Integrated Technology Corp. v. Rudolph Tech., 734 F.3ds 1352 (Fed. Cir. 2013) .................................................................................................... 14 Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384 (Fed. Cir. 1992) ..................................................................................................................... 13 Interconnect Planning Corp. v. Feil, 774 F.2d 1132 (Fed. Cir. 1985) ..................................................................................................................... 10 Lizard Tech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ........................................................................................... 24 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ............................... 14 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 574 (1986) ...................................................................................................................... 8 Minnesota Mining and Mfg. Co., Inc. v. Beautone Specialties Co., Ltd.117 F. Supp. 2D 72 (D. Mass. 1999) ...................................................... 25 Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352 (Fed. Cir. 2007) ..................................................................................................................... 21 Mother’s Restaurant, Inc. v. Mama’s Pizza Inc., 723 F.2d 1566 (Fed. Cir. 1983) .................................................................................................... 10 NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) ....................................................................................................................... 9 Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) ....................................................................................................................... 9 Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999) ................................................................................... 10 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................. 14, 15 PIN/NIP, Inc. v. Platte Chem. Co, 304 F.3d 1235 (Fed. Cir. 2002) ....................................................................................................................... 19, 24 PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) ....................................................................................................... 18, 23 Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2003) .................................................................................................... 23 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 7 of 35 Page ID #:1952 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - viii ESUP-6-0004P03 MSJ Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) ................................................................................................................ 9 Stevenson v. Sears, Roebuck & Co., 713 F.2d 705 (Fed.Cir.1983) ...................................................................................................... 10 Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332 (Fed. Cir. 2013) .................................................................................................... 24 Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558 (Fed. Cir. 1996) ........................................................................................... 25 Torres v. City of Madera, 648 F.3d 1119 (9th Cir. 2011) ......................................... 8 Tronzo v. Biomet, Ina, 156 F.3d 1154 (Fed. Cir. 1998) ........................................... 24 U.S. Phillips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371 (Fed. Cir. 2008) ....................................................................................................................... 8 Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989 (Fed. Cir. 2000) .................................................................................................... 18 Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) .................................. 18 Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989) ....................................................................................................................... 9 Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556 (Fed. Cir. 1994) ............................................................................................. 17, 18 Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) ...................................................................................................................... 9 Zenon Envtl., Inc. v. United States Filter Corp., 506 F.3d 1370 (Fed. Cir. 2008) .................................................................................................... 17 STATUTES 35 U.S.C. § 112 ................................................................................................. 17, 24 35 U.S.C. § 120 ........................................................................................................ 17 RULES Fed. R. Civ. P. 56(a) ................................................................................................... 8 Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 8 of 35 Page ID #:1953 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 1 ESUP-6-0004P03 MSJ I. INTRODUCTION This is patent case that should never have been filed. There are no genuine issues of material fact precluding summary judgment and Eko respectfully urges this Court to summarily dismiss the case for at least the following reasons. First, the Eko products cannot infringe the patents-in-suit because they do not have the required “passageway,” as found in a recent claim construction and summary judgment of noninfringement in the Western District of Washington involving the related parent patent, U.S. Patent No. 8,720,320 (320 patent) (Washington case). (SUF 39-50) Second, the Eko products cannot infringe the asserted 871 patent claims and claims 13, 19 and 31 of the 872 patent because the Eko mesh filter is formed as part of the receptacle, and is not “configured to be disposed within the receptacle” as these claims require. (SUF 51-72) Third, to the extent Eko’s accused products could be held to infringe any claims, they necessarily anticipate and invalidate those same claims. The continuation-in-part patents-in-suit are only entitled to the benefit of their filing dates, not those of their earlier parent patent applications, because the earlier filings do not disclose the invention as claimed. Because Eko’s accused products, as well as those of Solofill, LLC’s (“Solofill”), a defendant in parallel case Andrian Rivera v. Solofill, LLC, No. 16-cv-4706JAK-SS, were created, publicly disclosed, offered for sale and/or sold more than a year prior to Plaintiff’s 2012 filing dates, to the extent that Eko’s accused products infringe, they anticipate and invalidate each of the asserted claims. (SUF 3-36) Fourth, the claims of the 871 patent are invalid for lacking written description in accordance with 35 U.S.C. § 112 based on the claim limitation “a container… adapted to hold brewing material”—on the same basis that the claims of the parent 320 patent were found invalid by the ITC. (“ITC Decision”) (SUF 37-38) Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 9 of 35 Page ID #:1954 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 2 ESUP-6-0004P03 MSJ II. FACTUAL BACKGROUND AND ARGUMENT SUMMARY The uncontroverted facts are submitted separately, but summarized below. A. Eko and its Innovative Products Eko Brands, LLC (“Eko”) is a Washington corporation based in Woodinville, Washington and is the seller of Eko’s Ekobrew 2.0, Brew & Save 2.0, Fill ‘N Save, ReadyKup and Ekobrew Elite products (“Accused Products”). Espresso Supply, Inc. recently acquired Eko and is the parent company. (SUF 1-2) Plaintiff asserts that the Accused Products infringe claims 8, 10-11, 13-14 and 24-26 of the 871 patent and claims 7, 9-10, 13-14, 19, 26-28 and 31 of the 872 patent. The plastic Ekobrew 2.0, Brew & Save 2.0, Fill ‘N Save and ReadyKup products (“Plastic Ekobrew filters”) are structurally the same products for purposes of the present analysis. The stainless steel Ekobrew Elite filter stands on its own, and consists of two different versions, one that was sold in the U.S. through March 23, 2016 (referenced herein as “Elite 1.0”) and one that has been sold in the U.S. since August 4, 2016 (referenced herein as “Elite 2.0”). (SUF 2-5). Eko is one of the innovators of the “podless” reusable filter brewing cartridge that is used as a replacement for disposable “K-cups” for the KEURIG® and similar coffee brewers. K-Cups consist of a plastic cup, aluminum lid and pod contained within the K-Cup, which is filled with coffee grounds or other contents. KEURIG® and like devices brew the K-Cup beverage by piercing the foil seal with an upper hot water inflow needle while piercing the bottom of the plastic pod with a lower discharge Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 10 of 35 Page ID #:1955 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 3 ESUP-6-0004P03 MSJ needle. Grounds contained inside the pod are in a paper filter pod that is not pierced by the lower needle. Hot water is forced under pressure into the pod from the upper needle and brewed beverage flows through the pod’s disposable filter and then exits the interior of the K-Cup via the lower discharge needle. (SUF 6) Earlier entries in the KEURIG® aftermarket were semi-reusable; the container could be reused by replacing a disposable filter “pod” forming a separate water permeable package placed within the container. The coffee grounds were directly placed into the disposable filter pod so that the coffee grounds remained separate from the brewed coffee that flowed into the container and subsequently drained out of its open bottom. An example is the “Perfect Pod Holster” by Plaintiff, first offered for sale in 2007, which was designed to adapt any K-Cup replacement pod in KEURIG® and like devices. This was superseded in 2010 by the EZ-Cup and filter, also by Plaintiff, wherein the disposable filter filled with coffee grounds or other contents (the “pod”) was cup-shaped to fit into the enclosed EZ-Cup. (SUF 7-9) Despite the limited success of these pod-based options, there was a need for a better designed reusable filter brewing cartridge that avoided the limitations inherent in using a separate filter and pod, and allowed use of loose ground coffee in the cartridge, rather than being limited to the use of a pod in the cartridge. Accordingly, in late 2010 and early 2011, other innovators developed the “podless” reusable filter brewing cartridge as a replacement for “K-cups.” The “podless” design eliminates the need for a coffee pod with its own filter material. Instead, the cartridges incorporated a set of mesh windows integrated into the sidewall or base of the cartridge. In this integrated filter design, loose coffee is placed Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 11 of 35 Page ID #:1956 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 4 ESUP-6-0004P03 MSJ directly into a cartridge and instead of exiting by way of the lower needle via a passageway, the brewed coffee exits via the integrated filters formed in the walls and/or base of the cartridge. To operate with KEURIG® and similar coffee brewers, the integrated filter designs included a top entry into the cartridge for the spray nozzle and recess to accommodate the unused bottom discharge needle. (SUF 10) One of the earliest innovators of the podless cartridges was Eko. More than a year before Plaintiff filed for the first of the patents-in-suit on March 30, 2012, Eko’s founders had independently developed, publicly disclosed, offered for sale and filed for their own patent on their “Ekobrew” integrated filter cartridge—the same cartridge that is accused in this case. Eko first publicly disclosed and offered for sale its Ekobrew cartridge at least as early as February 8, 2011, and filed for a patent on its podless design May 9, 2011. Eko’s integrated filter cartridge not only replaced the K-Cup and allowed consumers to use their own coffee in KEURIG® and similar coffee brewers in a reusable device, but also eliminated the inefficient and clumsy need for pod-based filter such as in Plaintiff’s Perfect Pod Holster and EZ Cup. (SUF 11-13) B. Prior Third Party Development of Podless, Integrated Filter Cartridges Eko was not alone in recognizing the benefits of a podless cartridge. The founders of Solofill independently developed, publicly disclosed, offered for sale and filed for a patent on yet a different variation of an integrated filter cartridge in the same time frame. Solofill first publicly disclosed and offered for sale its “Solofill Cup” as early as September 29, 2010. While Solofill’s earlier versions incorporated a central shaft design rather than Eko’s recesses to avoid the unused bottom discharge needle, like Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 12 of 35 Page ID #:1957 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 5 ESUP-6-0004P03 MSJ the Ekobrew, the Solofill used integrated filters along the sides and bottom of the cartridge to facilitate discharge of the liquid brew. (SUF 14-17) C. Plaintiff’s Claimed Inventions to its Pod-Based Cartridges Plaintiff’s claims to have invented all forms of after-market reusable filter brewing cartridges are simply not true. The 320 patent, filed July 13, 2007, was specifically and narrowly directed to the pod-based designs of his Perfect Pod Holster and EZ Cup products—not a single embodiment discloses a podless, integrated filter design. FIGURES 3A and 4 of the 320 patent disclose the pod- based design incorporating a cup- shaped receptacle 302 with solid side walls 308, a lid or cover 304 and a bottom having a narrow passageway 324 and separate pods 320 of disposable filters containing coffee grounds within the container walls. When the receptacle’s lid was closed, the disposable filter pods formed a water permeable package containing the coffee that would allow the coffee grounds to remain separate from the brewed coffee that drained via the passageway formed in the bottom of the container. Because the container held a separate disposable pod and had no filter other than that of the pod itself, it was important not to pierce the pod. Consequently, a raised member 314 supported the pod to keep it clear of the lower brewer needle 406, which was used to extract the brewed coffee via the narrow passageway. (SUF 20-22) Despite this disclosure, Plaintiff asserts that the patents-in-suit cover the podless, fully reusable cartridge with a permanent integrated filter forming part of the container itself. But despite Plaintiff’s efforts to morph its invention into a podless cartridge many years after the original 2012 patent application filings, the claims of the 871 patent still require a “mesh filter disposed within the receptacle.” Moreover, the 872 patent requires the cover include a “tamping projection that Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 13 of 35 Page ID #:1958 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 6 ESUP-6-0004P03 MSJ protrudes into the receptacle” when the cover engages the receptacle—a features again present in the earlier Eko and Solofill cartridges. Yet these limitations do not enable the claims to cover a podless cartridge, and neither the patents-in-suit nor the parent applications to which they claim priority (the 320 patent along with U.S. Patent Nos. 8,291,812 (812 patent) and 8,621,981 (981 patent)) provide disclosure for the podless, integrated filter design of the accused Eko and Solofill products. D. Plaintiff’s Copying of Eko and Third Party Integrated Filter Cartridges In fact, it was Plaintiff who copied the Solofill and/or Eko podless, integrated filter designs after viewing them in 2010 and 2011, and who thereafter sought to distort its patents into something Plaintiff did not invent. The timeline is compelling: 13 Jul 2007 Plaintiff application for 320 patent filed (pod-based design) 10 Oct 2009 Plaintiff application for 981 patent filed for Coffee Maker (pod-based design) 17 Nov 2009 Plaintiff application for 812 patent filed (pod-based design) 12 Jul 2010 Solofill provisional patent application for a podless integrated filter cartridge 29 Sep 2010 Solofill sells its first integrated filter cartridge with a central shaft and lid nozzle 5 Nov 2010 Solofill publicly discloses a podless integrated filter cartridge on its website 8 Feb 2011 Eko publicly discloses and offers for sale a podless integrated filter cartridge 9 May 2011 Eko provisional patent application for a podless integrated filter cartridge 30 Mar 2012 Plaintiff’s application for 871 patent adding mesh filter language and “predetermined distance” limitation 11 Jul 2012 Plaintiff application for 872 patent adding tamping language and “predetermined distance” limitation In other words, it was only long after both the Solofill and Eko podless, integrated filter cartridges hit the market that Plaintiff first marketed its Eco-Fill podless, integrated filter cartridge, and embarked on a campaign to pursue patents that it hoped could cover what Solofill and Eko had already been doing for years. E. Plaintiff’s Earliest Priority Date is the Filing Date of the Patents-in-Suit Neither of the patents-in-suit nor their related parent applications provide support for the claimed inventions. Accordingly, the earliest priority date for each of the asserted claims is the filings dates of the continuation-in-part patents-in-suit. Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 14 of 35 Page ID #:1959 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 7 ESUP-6-0004P03 MSJ Because Eko’s Accused Products predate the earliest priority date of the asserted claims of the patents-in-suit, to the extent that they are deemed to infringe, they anticipate and invalidate those same claims. F. Washington Court Claim Construction and Noninfringement Judgment Patent infingement of the 320 patent has been the subject of a different federal court action, the Washington case. The accused products in that case are Eko’s Ekobrew, Ekobrew 2.0, Ekobrew Elite, Brew & Save and Brew & Save 2.0. With full participation of the same parties in the present suit, the court conducted a Markman procedure to construe several claim terms in the 320 patent claims. After carefully considering the written description, the intrinsic record and the extrinsic evidence submitted by the parties, in its February 24, 2016 Order Construing Claims (SUF 39), the court determined the scope and meaning of several claim terms, including notably that of “passageway” as “a narrow space of some depth or length connecting one place to another” (SUF 39-40) Eko moved for summary judgment of noninfringement with respect to claims 5, 6, 8, 10 and 18-19 of the parent 320 patent. On August 17, 2016, the court granted Eko’s motion for summary judgment of noninfringement, holding that the Accused Products did not infringe any of the 320 patent claims (literally or via equivalents) as a matter of law. (SUF 42) G. ITC Conclusion of 35 U.S.C. § 112 Patent Invalidity The ITC Decision (SUF 37-38) concluded that the written description of the 320 patent was narrowly directed to a pod-based cartridge, and to the extent the limitation of “a container… adapted to hold brewing material” allowed the claims to encompass a podless, integrated filter design, it was not supported by the written description. 35 U.S.C. § 112. Accordingly, the ITC held claims 5-7, 18 and 20 of the 320 patent invalid. Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 15 of 35 Page ID #:1960 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 8 ESUP-6-0004P03 MSJ II. ARGUMENT Summary judgment is appropriate if, viewing the evidence and all reasonable inferences drawn therefrom in the light most favorable to the nonmoving party, the moving party shows that “there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); Torres v. City of Madera, 648 F.3d 1119, 1123 (9th Cir. 2011). The moving party “bears the initial responsibility of informing the district court of the basis for its motion.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On an issue where the nonmoving party will bear the burden of proof at trial, the moving party can prevail by pointing out that the nonmoving party lacks evidence to support its case. Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007). If the moving party meets its initial burden, the opposing party must then set out “specific facts” showing a genuine issue for trial to defeat the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). “The mere existence of a scintilla of evidence in support of the nonmoving party’s position” is not sufficient; this party must present probative evidence in support of its claim or defense. Arpin v. Santa Clara Valley Transp. Agency, 261 F.3d 912, 919 (9th Cir. 2001). A. Eko’s Accused Products do not Infringe Any Asserted Claims In patent infringement cases, summary judgment is appropriate when it is apparent that only one conclusion as to infringement could be reached by a reasonable jury. U.S. Phillips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1374-75 (Fed. Cir. 2008). Determining whether a product infringes a patent involves a two- step analysis. First, the court determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device. Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347, 1354 (Fed. Cir. 2011). Infringement may be proven by literal infringement or under the doctrine of equivalents. Ethicon Endo-Surgey, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). For literal infringement, a plaintiff must show Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 16 of 35 Page ID #:1961 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 9 ESUP-6-0004P03 MSJ that every limitation set forth in a claim is found in the accused product. See, e.g., Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). Under the doctrine of equivalents (“DOE”), the relevant inquiry is whether “the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 70 (1997). Moreover, as a matter of law, an element of an accused product is not equivalent to a limitation if a finding of equivalence would vitiate entirely the limitation. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005). The infringement analysis is be limited to the independent claims (8, 14 and 24 of the 871 patent and 7, 14 and 26 of the 872 patent) because “[d]ependant claims cannot be found infringed unless the claims from which they depend have been found to have been infringed.” See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). As pertains to all asserted claims, none of the Accused Products infringe because they do not have the required “passageway.” In addition, as pertains to the asserted claims of 871 patent and claims 13, 19 and 31 of the 872 patent, none of the Accused Products infringe because they do not have the required mesh filter “configured to be disposed within the receptacle.” 1. Washington Judgment Controls for Missing “Passageway” Limitation Unless otherwise compelled, when different claims of a patent use the same language, courts are to give that language the same effect in each claim. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). This is true with similar claim terms in both the same and related patents. CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (construing term consistently through claims of parent and continuation-in-part patents); NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005). Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 17 of 35 Page ID #:1962 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 10 ESUP-6-0004P03 MSJ In addition, the principles of res judicata and/or collateral estoppel preclude Plaintiff from challenging the Washington case claim construction and noninfringement holding as applied in this case. A. B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed. Cir. 1983) (where a determination of the scope of patent claims was made in a prior case, and the determination was essential to the judgment there on the issue of infringement, there is collateral estoppel in a later case on the scope of such claims, i.e., the determined scope cannot be changed); See also Mother’s Restaurant, Inc. v. Mama’s Pizza Inc., 723 F.2d 1566 (Fed. Cir. 1983) (talks of collateral estoppel in terms of “issue preclusion”). Indeed, the Federal Circuit has held with respect to collateral estoppel that “a district court’s inquiry into whether the plaintiff was afforded a full and fair opportunity to litigate is quite narrow and does not involve a judgment on the merits.” Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373, 1380 (Fed. Cir. 1999). That is, the question is not whether the prior decision was correct, but instead only whether the patentee has a full and fair opportunity to litigate. Id.; see also Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 709 (Fed.Cir.1983) (“[I]t is clear from the case law that has developed since Blonder–Tongue that an inappropriate inquiry is whether the prior finding of invalidity was correct; instead, the court is only to decide whether the patentee had a full and fair opportunity to litigate the validity of his patent in the prior unsuccessful suit.”). As noted above, collateral estoppel also applies to common issues in actions involving different but related patents. See, e.g., Amgen, Inc. v. Genetics Inst., Inc., 98 F.3d 1328, 1329-32 (Fed. Cir. 1996) (collateral estoppel renders claims invalid when a narrower claim in a parent patent with the same specification had been held invalid as not enabled in an earlier action); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1136 (Fed. Cir. 1985) (collateral estoppel precludes relitigation of the same issue even in connection with different claims). Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 18 of 35 Page ID #:1963 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 11 ESUP-6-0004P03 MSJ The Washington court has already construed claims terms in the parent 320 patent case. (SUF 39-40) In this case, if not res judicata, then collateral estoppel should apply with respect to claim construction of the identical term “passageway” term found in the patents-in-suit. It is indisputable that each of the asserted claims requires the identical “passageway” limitation construed in the Washington case after a full and fair opportunity to litigate by Plaintiff. (SUF 43-46) This same limitation was found missing from the identical Eko products now accused of infringement in this case. (SUF 40-41) The Washington court gave full and careful consideration to the issues raised by ARM, and the determination was essential to the judgment of noninfringment. Accordingly, there is no compelling reason to construe the “passageway” term any differently in the 871 and 872 patents, which are based on continuation-in-part applications from the 320 patent. “Passageway” carries the same meaning in all asserted claims. To the extent that Plaintiff now challenges the Washington court’s ruling, it must prove that the decision in the earlier litigation was “seriously defective.” Blonder-Tongue Laboratories, Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971). There must be additional and strong fact evidence, which has not been shown to have been supplied to the district court. Catanzaro v. Fannon/Courier Corp., 745 F.2d 651, 655 (Fed. Cir. 1984). Plaintiff simply cannot meet this high burden to show a basis for a different outcome in this case. Even if the claim construction or judgment of the Washington case were to be scrutinized, it would be found to be correct. The Washington Court correctly evaluated the claims in light of the written description, the intrinsic record and the extrinsic evidence submitted by the parties. (SUF 39) Indeed, the court’s decision demonstrates the analytical attention of the issues before it—the district court did not merely adopt one of the two proposed interpretations of the parties but rather considered the matter carefully and construed the term using its own wording, which interpretation is succinct and clear: Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 19 of 35 Page ID #:1964 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 12 ESUP-6-0004P03 MSJ The Court finds that one skilled in the art would, in light of the intrinsic evidence, construe passageway as a narrow space of some depth or length connecting one place to another. (SUF 39, p. 12, lines 21-22) The Washington court’s subsequent summary judgment order expressly held that neither the mesh filter holes or the opening into which the mesh filters were molded or formed constitute the required passageways: [Eko’s] products utilize a broad, thin mesh or micro-punched steel filter to allow the brewed beverage to exit the receptacle. They do not, therefore, contain the claimed “passageway.” Given the Court’s construction of the term, this result should have be patently obvious and defendants should have withdrawn their infringement claims. . . .. No reasonable person looking at the cut-out openings on the side of the plastic or steel Ekobrew devices would describe them as passageways…..Even if the mesh or steel filters were removed and the openings in the sidewalls stood empty, there are myriad other words that a reasonable person would use to describe that feature (such as opening, gap, or hole) that would better represent its breadth and comparative size than would the word “passageway.” (SUF 42; emphasis added, citations omitted). So clear was the Washington court’s claim construction of passageway and finding of noninfringement based on the same limitation present in the asserted claims of this case, that in a November 3, 2016 Order Awarding Plaintiff Attorney’s Fees (SUF 43), the court found that Plaintiff’s pursuit of its infringement claims after the court issued its Markman ruling was “frivolous and unreasonable.” Holding that Plaintiff’s “dogged and unreasonable pursuit of its infringement claims” with “sophistry, using words in untenable ways and making arguments that no reasonable person would find persuasive” made this case exception, the Court awarded Eko its attorney’s fees. (SUF 43, pp. 1-2) 2. The Accused Products Lack “Passageway” and Do Not Infringe There is no dispute that the Ekobrew Plastic filters (photo below, left) each include only cut-out openings filled with a mesh or steel filter. The Elite 1.0 (below middle, no longer in production) includes both a bonded steel filter and perforations on the base. The current Elite 2.0 (below right) does not have any cut-out openings Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 20 of 35 Page ID #:1965 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 13 ESUP-6-0004P03 MSJ filled with mesh or steel filter, but rather includes only perforations on the base. (SUF 44, 49-50) Again, the Washington court granted summary judgment of noninfringement due to the lack of a “passageway” in the Accused Products, emphatically holding that “[n]o reasonable person looking at the cut-out openings on the side of the plastic or steel Ekobrew devices would describe them as passageways.” (SUF 42, pp. 3-4). For the same reasons, in this case Plaintiff cannot show that any Accused Products have a “passageway” as required by each of the asserted claims.1 There is no literal infringement. It is Plaintiff’s burden to come forward with proof of that the DOE is applicable. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed. Cir. 1992) (accused infringer when moving for summary judgment need only assert the absence of evidence on doctrine of equivalents; in response, the nonmovant must make a showing sufficient to carry its burden of proof). But DOE is not available in this case for at least three reasons. First, after careful consideration, the Washington court rejected the argument: Although the passageway claimed in the ‘320 patent performs the function of allowing brewed beverages to exit the receptacle, the term itself includes concepts of shape and size that are not subsumed by its function and cannot simply be ignored. (SUF 42, p. 4) Second, and related to the Washington court hold, a finding that the cut-out openings were equivalent to “passageways” would vitiate entirely the limitation, which is precluded under the doctrine of equivalents. Freedman Seating Co., 420 F.3d at 1358. Third, prosecution history estoppel applies because Plaintiff 1 And further with respect to the Elite 2.0, even under the broader interpretation of “passageway” urged by Plaintiff in his infringement contentions there is no infringement, as Plaintiff has identified only the cut-out openings as “passageways,” not perforations in the container. Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 21 of 35 Page ID #:1966 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 14 ESUP-6-0004P03 MSJ relinquished any claim to the DOE for the “passageway” limitation by virtue of his claim amendment to the term to overcome the prior art. Prosecution history estoppel prevents a patentee from recapturing through the DOE the subject matter that the applicant surrendered during prosecution, and presumptively applies when the applicant made a narrowing claim amendment related to patentability. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734, 736-37 (2002); Integrated Technology Corp. v. Rudolph Tech., 734 F.3ds 1352, 1356 (Fed. Cir. 2013). Here, in order to secure allowance over the prior art, Plaintiff specifically amended original claims that did not require a passageway to claims several times to include the identical passageway “providing fluid flow” language utilized in the 320 parent application. (SUF 41) As there are no genuine issues of material fact regarding Eko’s use of only a broad, thin mesh or filters, or perforations, in the Accused Products, summary judgment of noninfringement is appropriate here as it was in the Washington case. 3. Accused Products Do Not Include a Mesh Filter “disposed within the receptacle” The asserted 871 patent claims and claims 13, 19 and 31 of the 872 patent require a mesh filter “configured to be disposed within the receptacle.” (emphasis added) For this noninfringement analysis, the Court must first construe the term as matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384-91 (1996). To accomplish this task, the Court focuses on how a person of ordinary skill in the art at the time the patent application was filed would have understood the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). If the meaning of the claim language is “readily apparent even to lay judges,” claim construction “involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1315. The claims themselves, rather than dictionaries, encyclopedias, and treatises, will often provide a context for the contested terms and comparisons against which to measure the Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 22 of 35 Page ID #:1967 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 15 ESUP-6-0004P03 MSJ scope of the various claims. Id at 1314-15. The court also relies heavily on the patentee’s written description of the invention (Id. at 1317), giving the claims “their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art’” Id. at 1316; Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339-1340 (Fed. Cir. 2016) (specification is usually “dispositive; it is the single best guide to the meaning of a disputed term.”). Other intrinsic evidence from the prosecution history may also shed light on how the patentee and the PTO understood the claims at the time. Phillips, 415 F.3d at 1317. While the Federal Circuit has stated that claim construction “typically begins and ends with the intrinsic evidence,” it recognizes that other evidence external to the patent and prosecution history may also be helpful Id. Here, the term “disposed within” is used only in the claims as amended during prosecution—never in the specification. The only guidance provided in the specification regarding the position of the mesh filter is found in the drawings and related textual entries. Specifically, FIGURES 3 and 4 show the mesh filter 42 disposed or positioned within the receptacle 34. The specification further describes the mesh filter 42 as being “removable from the housing 30 for cleaning.” And in the Summary section, an embodiment is described wherein the metal filter mesh material is “interposed between an interior and exterior of the holder” to retain brewing material. (SUF 53-59) Given that the in all instances the position of the mesh filter is described in the specification as positioned inside the receptacle, the term should be construed as “configured to be positioned inside the receptacle.” This construction is consistent with the plain and ordinary meaning of the terms “disposed” and “within.” While not dispositive in claim construction, the Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 23 of 35 Page ID #:1968 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 16 ESUP-6-0004P03 MSJ definition of “disposed” is “to put in a particular or suitable place” and of “within” is “in or into the interior or inner part; inside.” (SUF 60-61) This again is consistent with construing the combined term “disposed within” as “positioned inside” the receptacle. Importantly, the plain meaning is that the filter is not a part of the receptacle itself, but rather is positioned inside it. Finally, this construction is consistent with the prosecution history. To secure allowance over the prior art, Plaintiff specifically amended the prior limitation of “a mesh filter attached to the coffee holder base and adapted to retain the brewing material in the coffee holder base” to read a mesh filter “wherein the mesh filter is configured to be disposed within the receptacle and to receive and support the brewing material in the path of the fluid flow.” (SUF 62) (emphasis added). Once construed, the claim limitation is applied to the Accused Products to ascertain infringement. Here, the mesh filter material used in the accused Ekobrew Plastic filters are formed, molded and integrated as part of the receptacle, rather than being positioned inside the receptacle. Plaintiff admits in his infringement contentions that the Ekobrew Elite 1.0 metal screen, which is attached to the outside of the receptacle, does not literally infringe. And the Ekobrew Elite 2.0 does not incorporate any mesh filter, but rather perforations in the base. Accordingly, none of Eko’s Accused Products literally infringe any claim of the asserted 871 patent claims or claims 13, 19 and 31 of the 872, which include this limitation. (SUF 63-72) Again, while the Plaintiff’s burden to prove, DOE is not available in this case. A finding that mesh filters that are “formed as part of” the receptacle are equivalent to “disposed within” would entirely vitiate the limitation, which is precluded under the DOE. Freedman, 420 F.3d at 1358. Plaintiff amended this claim language to replace language of a mesh filter “attached to” the receptacle to language wherein the mesh filter is “disposed within” the receptacle. (SUF 62) When Plaintiff chose the “disposed within” language, he clearly knew that meant it could not be “formed as part of” the container. In other words, if Plaintiff intended to capture the concept Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 24 of 35 Page ID #:1969 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 17 ESUP-6-0004P03 MSJ of an integrated filter, it would have been readily foreseeable at the time of the claim construction. By not capturing it then, Plaintiff gave up “integrated with” or “formed as part of” as an equivalent. As there are no genuine issues of material fact that Eko does not have a mesh filter “disposed within the receptacle” in the Accused Products, either literally or via equivalents, summary judgment of noninfringement is appropriate. B. Patents-in-Suit are Invalid as Anticipated is Accused Products Infringe The earliest priority date for each of the asserted claims is the March 30, 2012 filing date of the 871 patent and the July 11, 2012 filing date of the 872 patent, respectively. Plaintiff cannot claim an earlier priority date because the claimed invention is not found in any related parent patent application. Because Eko’s accused products, as well as prior products of Solofill, were created, publicly disclosed, offered for sale and/or sold more than a year prior to Plaintiff’s earliest priority date for the patents-in-suit, to the extent that Eko’s accused products infringe, they anticipate and invalidate each of the asserted claims. 1. Parent Patents Must Provide Support for Entire Claimed Invention “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. United States Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2008) (emphasis added). The determination of whether a priority document contains sufficient disclosure under Section 112 to support claims in a later application is a question of law. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994). When a dispute arises concerning whether a CIP patent is entitled to priority to the date of the original application and the Patent Office has not addressed the issue, the burden of proof rests with the party claiming priority to the Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 25 of 35 Page ID #:1970 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 18 ESUP-6-0004P03 MSJ date of the original application. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1303-1306 (Fed. Cir. 2008). To satisfy the written description requirement the disclosure of the prior application must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). This means a complete invention meeting all the requirements of the claim at issue, including all the part- to-part relationships. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 1003 (Fed. Cir. 2000) (written description lacking when it separately describes “the individual characteristics;” holding “but that is not the same as a description of a specific composition described by a particular selection of those characteristics”); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). The test of adequacy of written disclosure is distinct from anticipation and obviousness. PowerOasis, 522 F.3d at 1306 (“It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure [but] whether the application necessarily discloses that particular device.”) One skilled in the art, reading the disclosure, must immediately discern the invention as a whole—including each and every claim limitation. Waldemar, 32 F.3d at 558. 2. The CIP Patents-in-Suit are not Entitled to Parent Priority At a minimum, no single parent patent application provides disclosure support for the claimed invention, which requires a combination of: (a) “a container… adapted to hold brewing material;” (b) a mesh filter disposed within the receptacle or a tamping projection from cover; and (c) where “the predetermined distance [above the bottom surface of the brewing chamber] is selected such that a tip of the needle-like structure does not penetrate the exterior surface of the base.” The chart below summarizes how not a single parent patent provides support for all claimed limitations required for priority (indicating only undisputed missing limitations): Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 26 of 35 Page ID #:1971 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 19 ESUP-6-0004P03 MSJ 871 Patent brewing chamber adapted to hold brewing material mesh filter disposed within the receptacle predetermined distance such that tip of needle-like structure not penetrate exterior surface of base 320 parent Missing Missing 981 parent Missing 812 parent Missing 872 Patent brewing chamber adapted to hold brewing material tamping projection from cover predetermined distance such that tip of needle-like structure not penetrate exterior surface of base 320 parent Missing Missing Missing 981 parent Missing Missing 812 parent Missing Missing The 320 Parent Application A patentee cannot support a broad claim based on a narrow specification, because “a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.” PIN/NIP, Inc. v. Platte Chem. Co, 304 F.3d 1235, 1353 (Fed. Cir. 2002). On July 13, 2007, Plaintiff filed a patent application describing and claiming a “pod adaptor assembly” and a “brewing chamber for a beverage pod.” As explained above, Plaintiff only disclosed and claimed a “pod” based design incorporating a cup-shaped receptacle 302 with solid side walls 308, a lid or cover 304 and an open bottom via a narrow passageway 324, wherein separate pods 320 were made up of disposable filters and placed within the receptacle to separate the coffee grounds placed within the pod filter from the brewed coffee exiting via the passageway. (SUF 20-22) However, Plaintiff later attempted to broaden the issued claims of the 320 patent to allow him to argue that they cover a “podless” design that utilizes an “integrated filter.” After numerous amendments to the specification and claims, the 320 patent issued with claims covering a brewer with “a container . . . adapted to hold brewing material.” Because Plaintiff disclosed a container that had no filter of its own and therefore was adapted to hold a pod but not to itself hold any brewing material, such as loose coffee, the ITC has held that the issued claims are not supported by the specification and that claims 5-7, 18 and 20 were invalid as lacking Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 27 of 35 Page ID #:1972 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 20 ESUP-6-0004P03 MSJ written description support for the limitation “a container… adapted to hold brewing material.” (SUF 37) The 320 patent offers no support for this limitation. (SUF 23) The 320 patent fails to provide support for a cover with a tamping projection protruding therefrom; at most, it appears to describe a spring extending upwards from the base. (SUF 24) Finally, as described above, while the 320 patent generally discloses the use of a needle-like structure, it does not support the claim limitation of a predetermined distance such that tip of needle-like structure not penetrate exterior surface of base. Instead, the 320 patent discloses a needle-like structure that extends through and penetrates the outer plane of the base via the passageway, or lower opening. In FIGURE 3A, the receptacle 302 is described as having a substantially circular base 306, which in turn has an annual raised portion 314 and an opening 324 formed in the base. The needle-like structure is described as passing through the opening or passageway 324 in the base. Distance 328 to pod 320 containing brewing material is selected to avoid contact with the needle, but the raised portion of the base 314 is not disclosed as being high enough to avoid contact with the needle. (SUF 25) Apart from the prior art FIGURE 1, the only drawing showing a needle-like structure disposed below the brewing materials is FIGURE 4. For purposes of this analysis, if the “exterior surface of the base” to which the tip of the needle-like structure does not penetrate is deemed to be base 306 [sic, 104 in FIGURE 4], the needle 406 clearly penetrates the exterior surface of the base. But even if the exterior surface of the based is deemed to be the raised portion 314 (indicated with red line highlight), the needle 406 also clearly extends through or otherwise penetrates the exterior of the base. (SUF 20) This visual evidence is further confirmed in the text of the patent, wherein the needle 406 is described as “extend[ing] into the receptacle Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 28 of 35 Page ID #:1973 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 21 ESUP-6-0004P03 MSJ and the distance 328 between the opening 324 and the pod 404 is dimensioned such that the puncture needle 406 does not contact and pierce the pod 404.” (Id., 6:23-26) In other words, the 320 patent describes placing the needle-like structure within the passageway 324, not below the base 314. (Id., 6:4-34) Indeed, every reference to the needle in the 320 patent relative to the base describes it as “extend[ing] through the base,” (Id., Abstract; 2:26-28); “extending upwardly through the lower exterior surface” (Id., 2:47-48); “the lower needle 22 pierces the shell 14” (Id., 3:63-65)— all indicating that the needle is to penetrate the base, albeit not the pod. In short, there is absolutely no support in the 320 patent for the limitation: wherein the predetermined distance is selected such that a tip of the needle-like structure does not penetrate the exterior surface of the base. To the contrary, the 320 patent discloses the opposite, namely, that the tip of the needle-like structure must penetrate the exterior surface of the base. Accordingly, the 320 patent fails to provide support for all claim limitations in any of the asserted independent claims of the patents-in-suit. When an independent claim is invalid for lack of written description each of its dependent claims having the same limitation necessarily must be invalid as well; each dependent claim includes every limitation of the independent claim from which it depends, including the tainted and unsupported language that invalidated the independent claim. Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1357 (Fed. Cir. 2007) (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Therefore, the 320 patent likewise fails to provide support of any asserted dependent claim. The 981 Parent Patent Application The 981 patent is directed to a coffee maker. While the 981 patent describes a tamping spring protruding from the cover, this does not provide support for a cover forming part of the container that includes “a tamping projection that protrudes into Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 29 of 35 Page ID #:1974 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 22 ESUP-6-0004P03 MSJ the receptacle when the cover engages the top edge of the at least one sidewall.” (SUF 27) The 981 further fails to provide any support for a needle-like structure disposed below the base, let alone the limitation of a predetermined distance such that tip of needle-like structure not penetrate exterior surface of base. The only piercing structure for allowing exit of fluid is a knife (50) positioned to pierce the side of a disposable pod (SUF 28). Furthermore, the knife (50) is intended to pierce the pod and therefore the pod is not positioned such that the knife (50) does not penetrate it. To satisfy the written description requirement there must be proof that the inventor was in possession of the invention, meaning a complete invention meeting all the requirements of the claim at issue, including all the part-to-part relationships. Because the 981 patent fails to provide support for a container meeting this last limitation, it cannot be used as a basis for priority. The 812 Parent Patent Application The 812 patent is directed to a self-tamping coffee holder, and its disclosure parallels that of the 981 patent. While the 812 patent describes a tamping spring protruding from the cover, which may provide support for a tamping protrusion from the cover, it does not provide support for a cover with a tamping protrusion that tamps the coffee on closing the cover. (SUF 30) Moreover, given that its disclosure is identical to that of the 981 patent regarding a needle-like structure and its relationship to the case, as with the 981 patent, the 812 fails to provide any support for a needle-like structure disposed below the base, let alone the limitation of a predetermined distance such that tip of needle- like structure not penetrate exterior surface of base. Because this limitation is present in all asserted claims, the 812 patent fails to provide support for all claim limitations in any of the asserted independent claims of the patents-in-suit. (SUF 31) Because none of the parent patents provide written description support for each the limitations of the asserted claims of the patents-in-suit, as a matter of law, Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 30 of 35 Page ID #:1975 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 23 ESUP-6-0004P03 MSJ they are not entitled to priority date earlier than their March 30, 2012 and July 11, 2012 filing dates, respectively, for priority. As set forth below, for certain claims, there is no support even in the patents-in-suit. 3. The Ekobrew/Solofill Products Constitute Prior Art As set forth above and in the uncontroverted facts, Eko’s Ekobrew integrated filter cartridge was independently created, publicly disclosed, offered for sale and/or sold no later than February 8, 2011—more than a year prior to Plaintiff’s earliest priority date for the patents-in-suit. (SUF 11-13). In addition, Solofill’s integrated filter cartridge was created, publicly disclosed, offered for sale and/or sold even earlier—September 29, 2010—likewise more than a year prior to Plaintiff’s earliest priority date for the patents-in-suit. (SUF 14-17). Accordingly, both the Ekobrew and Solofill integrated filter cartridges constitute prior art to both patents-in-suit. 4. The Ekobrew and Solofill Products Invalidate all Asserted Claims It is a fundamental tenant of patent law that “that which would literally infringe if later in time anticipates if earlier.” PowerOasis, 522 F.3d at 1305 (quoting Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003)). Plaintiff’s infringement contentions assert that the Accused Products infringe claims 8, 10-11, 13-14 and 24-26 of the 871 patent and claims 7, 9-10, 13-14, 19, 26-28 and 31 of the 872 patent. (SUF 3) As noted above, the Accused Products including the Plastic Ekobrew filters, which are structurally the same products for purposes of the present analysis, as well as the stainless steel Ekobrew Elite 1.0. Plaintiff’s contentions did not assert that the stainless steel Ekobrew Elite 2.0 was infringed, and for the reasons set forth above should not be included as an Accused Product because Plaintiff acknowledges that it does not include a “passageway,” even as Plaintiff has interpreted that term. Accordingly, for all materials purposes related to the infringement and invalidity analysis, the Accused Products are structurally identical to both the Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 31 of 35 Page ID #:1976 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 24 ESUP-6-0004P03 MSJ Ekobrew and Solofill prior art integrated filters. (SUF 4-5, 44) To the extent that (1) the Court interprets “passageway” or “mesh filter configured to be disposed within the receptacle” as urged by Plaintiff and contrary to how the terms were construed in the Washington case or urged above such that the Accused Products are found to infringe, and (2) otherwise do not find the asserted claims invalid, all asserted claims are necessary invalid under 35 U.S.C. § 102 as anticipated by both the prior art Ekobrew and Solofill integrated filter cartridges. C. Claims of the 871 Patent Are Invalid for Lack of Written Description The written description requirement also compels the originally filed patent application to demonstrate the patentee’s possession of the full scope of the claimed invention. See Lizard Tech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Thus, a patentee cannot support a broad claim based on a narrow specification, because “a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.” PIN/NIP, 304 F.3d at 1353. In addition, a narrow specification limits claim breadth. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998) (“claims may be no broader than the supporting disclosure, and therefore , . . a narrow disclosure will limit claim breadth”); see also Tronzo v. Biomet, Ina, 156 F.3d 1154, 1159-60 (Fed. Cir. 1998); Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1341-43 (Fed. Cir. 2013). As noted above, the ITC Decision held claims of the 320 patent invalid for lacking written description in accordance with 35 U.S.C. § 112 based on the claim limitation “a container… adapted to hold brewing material.” (SUF 37) This identical claim limitation is present in the 871 patent. Because there is no support for the limitation in the related parent application, and nothing new was added to the 871 continuation-in-part application, the 871 claims are susceptible to the same analysis. (SUF 38) The 871 patent is in contrast with the 872 patent, where additional disclosure was added regarding the “container… adapted to hold brewing material:” Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 32 of 35 Page ID #:1977 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 25 ESUP-6-0004P03 MSJ The mesh filter 42 may be a fixed filter not removable from the holder base 34 or a removable filter, and may be constructed of nylon mesh or metal mesh, or any reusable material capable of holding the coffee while allowing a flow of heated water through the coffee. (SUP 19, 4:3-7; see also 2:19-20). But not even this discloses an embodiment with a permanent filter that is integrated into the container’s sidewall and, at best, the 872 claims could only claim priority to the actual filing date. Accordingly, the claims of the 871 patent are invalid for lacking written description in accordance with 35 U.S.C. § 112 based on the claim limitation “a container… adapted to hold brewing material”—on the same basis that the claims of the parent 320 patent were found invalid by the ITC. As noted by the Federal Circuit, “district court[s] can attribute whatever persuasive value to the prior ITC decision that [they] consider justified...” Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996); see also Minnesota Mining and Mfg. Co., Inc. v. Beautone Specialties Co., Ltd.117 F. Supp. 2D 72, 83 (D. Mass. 1999) (following Texas Instruments and finding plaintiff could not relitigate holding of non-infringement previously found by the ITC and affirmed by Federal Circuit); Fuji Photo Film Co. Ltd. v. Jazz Photo Corp. Inc., 173 F. Supp 2d 268, 274 (D.N.J. 2001) (holding that ITC findings can carry persuasive value). Regardless of how this Court decides to view the ITC’s findings, Plaintiff had a full and fair opportunity to maintain the validity of the 320 patent against a challenge, but he failed. After a year and a half of litigation, the ITC found ARM’s asserted claims to be invalid. Eko respectfully submits that a similar rationale should be adopted by this Court. IV. CONCLUSION Eko respectfully urges the Court to grant summary judgment in favor of Defendants based on noninfringement and/or invalidity. Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 33 of 35 Page ID #:1978 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 26 ESUP-6-0004P03 MSJ RESPECTFULLY SUBMITTED this 8th day of November, 2016. s/David A. Lowe (Pro Hac Vice) LOWE GRAHAM JONESPLLC 701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Lowe@LoweGrahamJones.com Attorneys for Defendants Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 34 of 35 Page ID #:1979 DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT - 27 ESUP-6-0004P03 MSJ CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the foregoing document has been served to all counsel or parties of record who are deemed to have consented to electronic service via the Court’s CM/ECF system. s/ David A. Lowe Case 2:16-cv-04676-JAK-SS Document 32 Filed 11/21/16 Page 35 of 35 Page ID #:1980 [PROPOSED] ORDER - 1 ESUP-6-0004P03 PORD David A. Lowe (Pro Hac Vice, WSBA No. 24453) LOWE GRAHAM JONESPLLC 701 Fifth Avenue, Suite 4800 Seattle, WA 98104 T: 206.381.3300 F: 206.381.3301 Lowe@LoweGrahamJones.com Tamany Vinson Bentz (CA Bar No. 258600) VENABLELLP 2049 Century Park East, Suite 2100 Los Angeles, CA 90067 T: 310.229.9900 F: 310.229.9901 TJBentz@Venable.com Attorneys for Defendants Eko Brands, LLC and Espresso Supply, Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA ADRIAN RIVERA, Plaintiff, v. EKO BRANDS, LLC; and ESPRESSO SUPPLY, INC., Defendants. ORDER GRANTING DEFENDANTS MOTION FOR SUMMARY JUDGMENT This matter is before the Court on Defendants Motion for Summary Judgment on the noninfringement and/or invalidity. Upon consideration of Defendants’ Motion, Plaintiff’s Opposition, any Reply, and the supporting declarations and exhibits filed in connection with briefing of the Motion, the Court GRANTS Defendants’ Motion and Plaintiff’s Complaint is DISMISSED with prejudice. In Re: Adrian Rivera, et al. Lead Case No. LA CV16-04676 JAK (SSx) Consolidated No. 16-CV-4753 JAK (SSx) Case 2:16-cv-04676-JAK-SS Document 32-1 Filed 11/21/16 Page 1 of 3 Page ID #:1981 [PROPOSED] ORDER - 2 ESUP-6-0004P03 PORD Therefore, it is this ____ day of _______________, 20____, ORDERED that Defendants’ Motion be GRANTED. DATED: United States District Judge Case 2:16-cv-04676-JAK-SS Document 32-1 Filed 11/21/16 Page 2 of 3 Page ID #:1982 [PROPOSED] ORDER - 3 ESUP-6-0004P03 PORD CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the foregoing document has been served to all counsel or parties of record who are deemed to have consented to electronic service via the Court’s CM/ECF system. s/ David A. Lowe Case 2:16-cv-04676-JAK-SS Document 32-1 Filed 11/21/16 Page 3 of 3 Page ID #:1983