Hamilton Beach Brands, Inc.v.Courtesy Products, LLCDownload PDFPatent Trial and Appeal BoardFeb 25, 201510943253 (P.T.A.B. Feb. 25, 2015) Copy Citation Trials@uspto.gov Paper 11 571-272-7822 Entered: February 25, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HAMILTON BEACH BRANDS, INC., Petitioner, v. COURTESY PRODUCTS, LLC, Patent Owner. ____________ Case IPR2014-01260 Patent 7,258,884 B2 ____________ Before GRACE KARAFFA OBERMANN, HYUN J. JUNG, and CHRISTOPHER M. KAISER, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01260 Patent 7,258,884 B2 2 I. INTRODUCTION Hamilton Beach Brands, Inc. (“Petitioner”) filed a corrected Petition (Paper 4, “Pet.”), requesting institution of an inter partes review of claims 1–53 of U.S. Patent No. 7,258,884 B2 (Ex. 1001, “the ’884 patent”). Courtesy Products, LLC (“Patent Owner”) timely filed a Preliminary Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314. Upon consideration of the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, the Petition is denied under 35 U.S.C. § 314(a) for the reasons that follow. A. Related Proceedings The ’884 patent is the subject of Courtesy Products, LLC v. Hamilton Beach Brands, Inc., 1:13-cv-02012-SLR (D. Del.). Pet. 3; Paper 6, 2. The ’884 patent claims priority to the same application as the patent that is the subject of an inter partes review petition in Case IPR2014-01257. Id. The ’884 patent is related also to the patent that is the subject of an inter partes review petition in Case IPR2014-01258. Id. B. The ’884 Patent (Ex. 1001) The ’884 patent describes a method of brewing a single cup of coffee. Ex. 1001, 4:57–58. The method includes the steps of “providing a single- use, disposable brew basket 40 [with] brewing reservoir 50,” which is inserted during another step into basket receiving recess 16 of electric coffee brewing machine 10. Id. at 4:59–61, 4:65–67. IPR2014-01260 Patent 7,258,884 B2 3 Claims 1, 16, and 29 are the independent claims challenged by this Petition, and claim 1 is reproduced below: 1. A method of supplying in-room beverage service to a lodging establishment that provides beverage dispensers in rooms of the lodging establishment for use by a plurality of different lodging guests, the beverage dispensers comprising a water reservoir, an electrical heating element for heating water, and a location at which heated water is discharged, the method comprising: (a) providing a plurality of disposable filter packs, the filter packs containing an amount of grounds to brew approximately only a single serving of brewed beverage; (b) providing a plurality of one-time, single-use, single- serving disposable brew baskets, each brew basket comprising a bottom and a wall extending generally upwardly from the bottom to define a brewing reservoir, the bottom and wall being formed with a disposable rigid one-piece construction, the bottom having a port there through to permit a brewed beverage to flow from the brewing reservoir of the disposable brew basket into a single serving beverage container located proximate to the beverage dispenser, the wall of the basket extending upwardly from the bottom to an open top, the brewing reservoir having a size dimensioned appropriate to make approximately only a single serving of beverage during a single brewing operation, the brewing area being sufficiently large to hold one of the filter packs and the heated water while brewing without a level of the heated water rising above and overflowing the open top; (c) supplying the rooms with at least one of the plurality of disposable brew baskets; (d) supplying the rooms with at least one of the disposable filter packs, where the brew basket and filter pack are used for brewing a single serving of beverage; and IPR2014-01260 Patent 7,258,884 B2 4 (e) after using the brew basket and filter pack in a single brewing operation, discarding the brew basket and filter pack, and supplying a new unused brew basket and new filter pack in the room. C. Challenges Petitioner challenges the claims as follows, all on the basis of obviousness: References Claims Challenged Liu, 1 Sylvan, 2 and Luedtke 3 1–53 Bixby, 4 Sylvan, and Luedtke 1–53 D. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); accord In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015 WL 448667, at *8 (Fed. Cir. Feb. 4, 2015) (“Even if the broadest reasonable interpretation standard were not incorporated into the IPR provisions of the statute, the standard was properly adopted by PTO regulation.”). Petitioner proposes a construction for “‘brewing reservoir.’” Pet. 18. For the purposes of this Decision, we determine that no express claim construction is required. 1 U.S. Pat. No. 6,164,191, iss. Dec. 26, 2000 (Ex. 1002). 2 U.S. Pat. No. 5,840,189, iss. Nov. 24, 1998 (Ex. 1003). 3 U.S. Pat. No. 3,446,624, iss. May 27, 1969 (Ex. 1004). 4 U.S. Pat. No. 3,620,155, iss. Nov. 16, 1971 (Ex. 1005). IPR2014-01260 Patent 7,258,884 B2 5 II. ANALYSIS A. Obviousness of Claims 1–53 over Liu, Sylvan, and Luedtke Petitioner argues that claims 1–53 are unpatentable under 35 U.S.C. § 103 over Liu, Sylvan, and Luedtke, referring to disclosures in the references and a claim chart. Pet. 5, 19–38. Petitioner also relies on a Declaration by Kurt J. Krause (Ex. 1007, “Krause Declaration”) and a Declaration by Alexander H. Slocum (Ex. 1009, “Slocum Declaration). Pet. 4. 1. Claims 1–15, 42, 45, 48, and 51 The preamble of claim 1 recites “[a] method of supplying in-room beverage service to a lodging establishment that provides beverage dispensers in rooms of the lodging establishment for use by a plurality of different lodging guests,” and Petitioner argues that “Liu discloses a single serving beverage maker 8.” Pet. 23 (citing Ex. 1002, 1:58–59, Fig. 1; Ex. 1009 ¶ 29). Petitioner additionally states that “Liu in view of relevant hospitality industry regulations teaches the limitations.” Id. (citing Ex. 1007 ¶¶ 23–27; Ex. 1009 ¶ 32). Petitioner also argues that “combining Liu, Sylvan, and Luedtke demonstrates that all the elements in the ’884 Patent were known in the prior art, and their combination yielded nothing but predictable results.” Id. at 21 (citing Ex. 1009 ¶¶ 40–46). Petitioner further argues that “modifying Liu according to the teachings of Sylvan would have involved a simple substitution.” Id. (citing Ex. 1009 ¶¶ 40–41). Petitioner additionally argues that “it would have also been obvious . . . to extend Luedtke’s known technique . . . to improve Liu’s filter bag.” Id. at 22 (citing Ex. 1007 ¶ 53; Ex. 1009 ¶ 45). Petitioner further argues that IPR2014-01260 Patent 7,258,884 B2 6 it would have been obvious . . . to supply a hotel room with at least one disposable brew basket . . . and at least one disposable filter pack . . . , discard the disposable filter pack and brew basket after use, and then supply the hotel room with at least one new unused disposable filter pack and at least one new unused disposable brew basket . . . because these actions are inherent to an in-room beverage service. Id. (citing Ex. 1007 ¶¶ 50–53; Ex. 1009 ¶ 46). Patent Owner responds that the “petition does not articulate where each of the claim elements is found in the cited art” and that “the petition points to ‘hospitality industry regulations,’ which are not part of any proposed ground and which were improperly added to the discussions of the limitations in the corrected petition.” Prelim. Resp. 6, 7. In particular, Patent Owner argues that “[n]othing in the cited portion of Liu, which relates to a beverage maker ‘designed for use in vehicles’ . . . has anything to do with the claimed lodging establishment limitations.” Id. at 7 (citing Ex. 1002 1:58–60). Patent Owner also argues that the “petition appears to acknowledge this deficiency of Liu through its reliance on the industry regulations.” Id. The phrase “lodging establishment” only appears in the preamble of claim 1, and Patent Owner’s argument presumes it is limiting. Petitioner’s arguments for the preamble that “Liu discloses a single serving beverage maker 8” and “Liu in view of relevant hospitality industry regulations teaches the limitations” indicate that Petitioner also considers the preamble as limiting. See Pet. 23. Petitioner cites column 1, lines 58–59 of Liu, which describes single serving beverage maker 8, but Liu also states in column 1, lines 59–60 that “[i]t is to be understood that beverage maker 8 is preferably designed for use in vehicles.” Thus, the cited portion of Liu does IPR2014-01260 Patent 7,258,884 B2 7 not teach or suggest explicitly a “method of supplying in-room beverage service to a lodging establishment that provides beverage dispensers in rooms of the lodging establishment for use by . . . lodging guests.” Also, although one asserted rationale pertains to the steps reciting “rooms” or “room” of the lodging establishment (see Pet. 22), Petitioner’s rationales for combining Liu, Sylvan, and Luedtke do not address directly why these references would render obvious a “method of supplying in-room beverage service to a lodging establishment that provides beverage dispensers in rooms of the lodging establishment for use by . . . lodging guests.” Id. at 21–22. Therefore, Petitioner must be relying on Liu and “relevant hospitality industry regulations” to argue why a “method of supplying in-room beverage service to a lodging establishment that provides beverage dispensers in rooms of the lodging establishment for use by . . . lodging guests” is rendered obvious. See id. at 21–23. Petitioner’s argument regarding Liu and “relevant hospitality industry regulations” refers to paragraphs 23–27 of the Krause Declaration (Ex. 1007) and paragraph 32 of the Slocum Declaration (Ex. 1009). Pet. 23. The Petition merely cites the declarations and does not explain sufficiently the significance of the declarations. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Liu and relevant hospitality industry regulations would render obvious the preamble of claim 1, the citations to the Krause and Slocum Declarations amount to incorporation by reference of arguments made in those declarations that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). IPR2014-01260 Patent 7,258,884 B2 8 Moreover, the cited paragraphs do not support the statement that “Liu in view of relevant hospitality industry regulations teaches the limitations.” Pet. 23. Paragraphs 23–27 of the Krause Declaration refer to Exhibits 1006, 1011, and 1023–1024, which are the prosecution history of the ’884 patent, a cost analysis, and articles from Cornell Hotel and Restaurant Administration Quarterly. Ex. 1007 ¶¶ 13 (list of exhibits), 23–27; Pet. iii–iv (list of exhibits). Thus, the cited paragraphs of the Krause Declaration do not discuss the combination of Liu and hospitality industry regulations. Paragraph 32 of the Slocum Declaration cites paragraphs 14–15 of the Krause Declaration and opines that it would have been obvious to supply Liu’s single serving beverage maker to a lodging establishment. Ex. 1009 ¶¶ 6 (list of exhibits), 32; Pet. iii–iv (list of exhibits). Thus, the citation to the Slocum Declaration also does not discuss the combination of Liu and hospitality industry regulations. Exhibits 1015–1018, which are not referenced in either declaration, are county and state regulations. Ex. 1007 ¶ 13; Ex. 1009 ¶ 6; Pet. iii–iv. Thus, the cited paragraphs of the Krause and Slocum Declarations fail to argue how Liu in view of relevant hospitality industry regulations teach the preambles of claims 16 and 29. Finally, as Patent Owner notes, the first-filed Petition stated that “[i]t was well known at the time of the invention that such single serving beverage makers were supplied in hotel rooms for a plurality of different hotel guests.” Paper 1, 22 (citing Ex. 1007 ¶¶ 23–27; Ex. 1009 ¶ 32). The subsequently filed, corrected Petition changed the statement to “[i]n addition, Liu in view of relevant hospitality industry regulations teaches the limitations.” Pet. 23. Without deciding the propriety of the change, we perceive this change to be an attempt to identify references relied upon in the IPR2014-01260 Patent 7,258,884 B2 9 cited portions of the Krause and Slocum Declarations; however, as discussed above, hospitality industry regulations are not referenced in the cited portions of the declarations. Thus, for claim 1 and its dependent claims 2–15, 42, 45, 48, and 51, we determine that the information presented in the Petition does not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of these claims. 2. Claims 16–41, 43, 44, 46, 47, 49, 50, 52, and 53 Independent claim 16 recites “[a] method of supplying in-room beverage service to a lodging establishment,” and independent claim 29 recites “[a] method of supplying in-room beverage service to a lodging establishment, the lodging establishment having at least one room that contains a single beverage dispenser for in-room use by a plurality of different lodging guests.” For each of these recitations, Petitioner states only that “Liu in view of relevant hospitality industry regulations teaches this limitation (see claim 1[preamble] above).” Pet. 28, 32–33. For the reasons discussed above in connection with the preamble of claim 1, we determine that the information presented in the Petition does not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of independent claims 16 and 29 and their dependent claims 17–28, 30–41, 43, 44, 46, 47, 49, 50, 52, and 53. B. Obviousness of Claims 1–53 over Bixby, Sylvan, and Luedtke Petitioner argues that claims 1–53 are unpatentable under 35 U.S.C. § 103 over Bixby, Sylvan, and Luedtke, referring to disclosures in the references and a claim chart. Pet. 5, 38–56. Petitioner also relies on the IPR2014-01260 Patent 7,258,884 B2 10 Krause Declaration (Ex. 1007) and the Slocum Declaration (Ex. 1009). Id. at 5. Patent Owner responds that the “petition’s analysis for the proposed Bixby ground is similar to its analysis for the proposed Liu ground” and “fails to identify where at least the lodging establishment limitations of independent claims 1, 16, and 29 are found in Bixby, Sylvan, and Luedtke.” Prelim. Resp. 8, 9. The phrase “lodging establishment” is found only in the preamble of claim 1, the preamble and one step of claim 16, and the preamble of claim 29. For the preamble of claim 1, the Petition argues that “Bixby discloses a chassis 10” and that “Bixby in view of relevant hospitality industry regulations teaches this limitation.” Pet. 41 (citing Ex. 1005, Fig. 1; Ex. 1007 ¶¶ 23–27; Ex. 1009 ¶¶ 9, 55). For the preambles of claims 16 and 29, the Petition argues “Bixby in view of relevant hospitality industry regulations teaches this limitation” and states “see claim 1[preamble] above.” Pet. 46–47, 50. Also, Petitioner’s asserted rationales for combining Bixby, Sylvan, and Luedtke are similar to the rationales asserted for combining Liu, Sylvan, and Luedtke. See id. at 21–22, 39–41. Petitioner additionally argues that “a change in size, for example, modifying Bixby from a multi-cup beverage maker to a single-serving beverage maker, would have been an obvious design choice.” Id. at 39–40. Thus, Petitioner’s citation to Bixby and Petitioner’s rationales do not address expressly the phrase “lodging establishment” in claims 1, 16, and 29. Petitioner’s argument regarding Bixby and “relevant hospitality industry regulations” refers to paragraphs 23–27 of the Krause Declaration (Ex. 1007) and paragraph 55 of the Slocum Declaration (Ex. 1009). Pet. 23. IPR2014-01260 Patent 7,258,884 B2 11 As with the argument that Liu, Sylvan, and Luedtke render obvious the preamble of claim 1, the Petition merely cites the declarations and does not explain sufficiently the significance of the cited portions of the declarations. See 37 C.F.R. § 42.22(a)(2) (requiring the Petition itself to contain “a full statement of the reasons for the relief requested”). Thus, for the reasons discussed above for the combination of Liu, Sylvan, and Luedtke, without a sufficient explanation why Bixby and relevant hospitality industry regulations would render obvious the preambles of independent claims 1, 16, and 29, the citations to the Krause and Slocum Declarations amount to an incorporation by reference of arguments made in those declarations that circumvents the page limits that apply to petitions. 37 C.F.R. § 42.24(a). The cited portions of the declarations also suffer from the same deficiencies discussed above for Liu, Sylvan, and Luedtke. Thus, we determine that the information presented in the Petition does not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of claims 1–53 as unpatentable over Bixby, Sylvan, and Luedtke. III. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated there is a reasonable likelihood it would prevail in showing the unpatentability of at least one of the challenged claims. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted. IPR2014-01260 Patent 7,258,884 B2 12 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 Copy with citationCopy as parenthetical citation