Small California coffee roasting company, JBR d/b/a Rogers Family Co. (JBR), recently defeated industry coffee giant, Keurig in a patent infringement battle over single-serve coffee pods. More specifically, Keurig claimed that JBR’s OneCup infringed on three of its patents–one of which is a design patent for its beverage cartridges and the other two concern apparatus and method claims from the Keurig brewer patents.
Keurig makes and licenses brewers and beverage cartridges (pods) that are known as “K-Cups.” JBR makes beverage cartridges that are known as “OneCups,” which are made to be used with the Keurig brewers. Back in January 2013, the Court held a Markman hearing, which is a pretrial evidentiary hearing that’s typically held whenever someone alleges patent infringement, and a memorandum and order interpreting certain pertinent terms used in two of the patents at issue was issued in March 2013. The current case deals with JBR’s motions for summary judgment with respect to the issue of infringement of Design Patent No. D502,362 and certain specific claims associated with two of the brewer patents — U.S. Patent No. 7,347,138 and U.S. Patent No. 7,165,488.
The Court’s Analysis
With regard to the ‘362 design patent, Keurig claimed that JBR “directly” infringed that patent because it manufactured and sold beverage cartridges (or pods) that are covered under the patent. The Court began its analysis by applying the “ordinary observer test,” which is typically applied in cases involving design patent infringement. The test, simply stated, is if an ordinary observer (meaning someone who is not an expert in the field, but is a person who buys similar things or is interested in the subject matter) looks at the two designs which are substantially the same and the resemblance misleads the observer such that he or she buys one as opposed to the other, “the first one patented is infringed by the other.”
The Court specifically noted that ‘362’s title, which refers to the design as being one for a “disposable beverage filter cartridge,” doesn’t actually describe any internal cartridge parts that are licensed and sold by Keurig as a K-Cup. In fact, it describes a cartridge that is separate and distinct such that it would be visible to the “ordinary observer” during normal use. That said, the Court noted that it would compare JBR’s cartridge with the ‘362 patent drawings–but first, it would make a determination as to whether the JBR and Keurig designs are “plainly dissimilar” in the eyes of an ordinary observer.
Just looking at a side-by-side comparison of the pictures of both company’s pods, anyone can see that they are “different.” The Court, however, noted that the two designs did have certain similarities and differences. First of all, both designs have “circular lids with depending skirts,” but JBR’s cartridge skirt is a bit longer than Keurig’s skirt. Additionally, JBR’s filter is not as long and is wider than Keurig’s, which is more triangular in shape. Given those differences, the Court found that JBR’s and Keurig’s pod designs were “sufficiently distinct” and it granted JBR’s motion for summary judgment on the grounds of non-infringement of the ‘362 patent. With that done, there was no need to go to the drawings.
A Look at the Claims of the ‘138 and ‘488 Patents
Keurig also claims that JBR “indirectly” infringed upon its ‘138 and ‘488 patents when it made and sold beverage cartridges that could be combined with the Keurig brewers “to form an apparatus claimed in the ‘138 patent and practice a method claimed in the ‘488 patent.” However, the Court stated that in order for Keurig to prove indirect infringement, there must be direct infringement of the claims at issue. In other words–Keurig must show that the users of the Keurig brewers infringed upon the claims of the two patents when they used JBR’s pods in them.
Naturally, JBR argued that the users/consumers do not directly infringe upon the claims of the patents because once the single-use pods have been used, the consumers can choose to replace them with any brand of pod they want. As a Keurig user myself, I certainly agree with JBR on that! JBR also claimed “patent exhaustion” of ‘138 and ‘488. So, what is patent exhaustion? Generally speaking, it means that a patent holder is barred from controlling the use of a claimed apparatus after it’s been sold. The Court granted JBR’s summary judgment motion with respect to the ‘138 patent, noting that when Keurig sold its brewer and pods to consumers, the doctrine of patent exhaustion kicked in and accordingly, the claims were exhausted.
With respect to the claims in ‘488, which are method claims, the Court found that Keurig was not entitled to assert that the consumers directly infringed the method claims, and accordingly, it could not assert indirect infringement of those claims by JBR. Ruling otherwise “would allow Keurig an end-run around the exhaustion doctrine by claiming methods as well as the apparatus that practices them, which is the tactic that the Supreme Court has explicitly admonished.” That said, the court granted JBR’s summary judgment motion regarding infringement of the ‘488 patent as well.
In a comment made by Jon Rogers, president of the Rogers Family Company, he stated that their pods didn’t even look remotely like Keurig’s and that a person would “have to be blind buying our product thinking it was theirs.” Just looking at the pictures and drawings of the two, I’d have to agree with Rogers. All it boils down to is Keurig wants consumers who use its brewer to also use its pods. Really Keurig? Clearly Judge Saylor disagrees.
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One comment so far.
nedJune 10, 2013 10:02 pm
I’m confused. You write: “With that done, there was no need to go to the drawings.”
It is my understanding that the “claims” of a design patent are the drawings. How can you determine infringement or non-infringement without looking at the patent drawings – the patent claims – then?
A product/design comparison that did not involve the patent drawings would seem to be such a fundamental error that I wonder if you have interpreted the opinion correctly.