January 23, 2020
Affirmed: Patent Owner’s Claim Construction that Excluded Preferred Embodiments Was Not Correct
In Eko Brands, LLC, v. Adrian Rivera Maynez Enterprises, Inc., [2018-2215, 2018-2254] (January 13, 2020), the Court of Appeals for the Federal Circuit affirmed the judgment of invalidity of U.S. Patent No. 8,720,320, owned by Adrian Rivera Maynez Enterprises, Inc. (ARM), on an adapter device for use with Keurig® single-brew coffee machines and of infringement of U.S. Patent No. 8,707,855 owned by EKO on a reusable filter cartridge device for use with single-serve beverage brewing machines.
On appeal, ARM argued that the brewing chamber in the claims of the ‘320 patent required a closed chamber, and thus the prior art did not make the claimed invention obvious. The Federal Circuit distinguished other patents that showed closed brewing chamber, noting that these specifically describe the chamber as sealed. The Federal Circuit also rejected the argument that several embodiments of in the ‘320 patent that showed sealed brewing chambers meant that the brewing chamber had to be sealed because there were also several embodiments with unsealed brewing chambers. The Federal Circuit — applying the Canon of Claim construction that says “a claim construction that ‘excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support” — found that the district court’s construction was correct. The Federal Circuit also affirmed the award of attorneys fees to the accused infringer of the ‘320 patent.
On the issue of infringement of the ‘855 patent, ARM argued that the claims of the patent required a single serve beverage brewer (“A beverage brewing device for use with a single serve beverage brewer having a brewing holster …”). The Federal Circuit disagreed, noting that on its face does not require a beverage brewer, even if the preamble is limiting. To the extent that the claim mentions a beverage brewer it is only as a “reference point” to define the purpose and structure of the brewing device. Thus, the Federal Circuit affirmed the finding of infringement.
The Federal Circuit also affirmed the finding of no willful infringement, noting that the instruction as a whole was not legally erroneous given the limited nature of Eko’s objection.