Keurig, Incorporated v. Sturm Foods, Inc.
732 F.3d 1370
| Fed. Cir. | 2013Background
- Keurig makes patented single-serve brewers and sells disposable cartridges; Sturm makes and sells compatible third-party cartridges (Grove Square) but not brewers.
- Keurig sued Sturm alleging direct and induced infringement of method claims in U.S. Pat. No. 7,165,488 (claim 29) and U.S. Pat. No. 6,606,938 (claims 6–8), based on consumers using Sturm cartridges in Keurig brewers.
- Sturm moved for summary judgment asserting patent exhaustion as an affirmative defense; the district court granted summary judgment of noninfringement on exhaustion grounds and entered final judgment under Rule 54(b).
- The district court held that Quanta’s substantial-embodiment test for exhaustion of method claims (applied to sales of unpatented components) did not control because Keurig sold a patented apparatus (the brewer) that fully practiced the claimed inventions.
- The court concluded Keurig’s unconditional authorized sale of its patented brewers exhausted its patent rights in both apparatus and method claims, so Sturm’s cartridges could be used without exposing Sturm to liability.
- Keurig appealed; the Federal Circuit affirmed, concluding exhaustion barred Keurig’s infringement claims against Sturm.
Issues
| Issue | Keurig's Argument | Sturm's Argument | Held |
|---|---|---|---|
| Whether Quanta’s substantial-embodiment test governs exhaustion of Keurig’s asserted method claims | Quanta controls; sale not exhausted because brewers can be used noninfringingly with reusable or pre-pierced cartridges | Quanta addresses sales of unpatented components; here Keurig sold a patented brewer whose unconditional sale exhausted patent rights | Sale of Keurig’s patented brewers exhausted Keurig’s rights in the apparatus and method claims; Quanta test inapplicable here |
| Whether exhaustion must be decided claim-by-claim | Keurig: exhaustion should be assessed per claim | Sturm: exhaustion applies to the patents/rights conveyed by the authorized sale | Court rejected claim-by-claim approach here, treating exhaustion as applying to the asserted patents’ rights (concluding apparatus and method claims are judged together) |
| Whether a purchaser’s potential noninfringing uses of the brewer defeats exhaustion | Keurig: multiple noninfringing uses (e.g., pre-pierced cartridges) mean rights are not exhausted | Sturm: purchaser’s ability to use third-party cartridges does not preserve patentee’s downstream control | Court held potential noninfringing uses do not save method claims from exhaustion once a patented apparatus is sold without restriction |
| Whether Sturm can be liable for induced infringement based on sale of cartridges | Keurig: cartridge makers can be liable if their product causes users to practice patented methods | Sturm: Keurig’s sale exhausted rights, so third-party cartridge makers cannot be held liable for uses of the sold brewer | Inducement claim fails because Keurig’s patent rights were exhausted by sale of the brewer |
Key Cases Cited
- Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008) (establishes exhaustion principle and the substantial-embodiment test for sales of unpatented components)
- Univis Lens Co. v. United States, 316 U.S. 241 (1942) (method claims exhausted when sale of uncompleted article embodied essential features of the patented method)
- Adams v. Burke, 84 U.S. 453 (1873) (historical rule: authorized sale of a patented article terminates the patentee’s control over its use)
- Princo Corp. v. ITC, 616 F.3d 1318 (Fed. Cir. 2010) (discusses policy rationales underlying exhaustion doctrine)