Rivera v. International Trade Commission
857 F.3d 1315
| Fed. Cir. | 2017Background
- Rivera owned U.S. Patent No. 8,720,320 (the ’320 patent) claiming a "container . . . adapted to hold brewing material" for single-serve brewers; the specification repeatedly describes a cup-shaped receptacle that receives a separate "pod."
- The patent's stated goal was to adapt cup-shaped cartridge brewers (e.g., Keurig®) to accept separate pods; the specification expressly defines "pod" broadly but every embodiment shows a distinct pod placed inside a receptacle.
- Rivera sued Solofill before the ITC under 19 U.S.C. § 1337, alleging Solofill’s K2/K3 cup-shaped cartridges (with integrated filter media) infringed claims 5–7, 18, and 20.
- The ALJ found no infringement; on review the Commission held the asserted claims invalid for lack of written description (and found anticipation of some claims), producing a divided decision.
- Rivera appealed; the Federal Circuit reviewed written-description (a factual issue) for substantial evidence and considered whether the specification supported claims covering cartridges with an integrated filter.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether specification provides written-description support for claims covering a container with an integrated filter (i.e., the accused Solofill cartridges) | Rivera: the patent’s broad, express definition of "pod" ("package formed of a water permeable material and containing ground coffee") teaches a genus that includes integrated-filter cartridges | Solofill & Commission: every embodiment and the patent’s purpose distinguish a separate "pod" from the receptacle; no disclosure that the receptacle itself can be the pod or contain an integrated filter | Held: Claims invalid for lack of written description; specification shows pod and receptacle as distinct, so it does not reasonably convey possession of an integrated-filter container |
| Whether extrinsic/ordinary-skilled-artisan knowledge can cure the written-description gap | Rivera: POSITA knowledge of integrated filters and the need for a filter can supply the missing teaching | Commission & Court: written description is determined from the four corners of the specification; background knowledge cannot be used to supply a critical structural teaching not disclosed | Held: Rejected Rivera’s reliance on POSITA knowledge; background art cannot teach the missing disclosure to meet written description |
Key Cases Cited
- SSIH Equip. S.A. v. Int’l Trade Comm’n, 718 F.2d 365 (Fed. Cir.) (written-description factual review standard at the ITC)
- Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir.) (clear-and-convincing standard for invalidity defense)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (en banc) (written-description requires specification to convey possession to POSITA)
- Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir.) (four-corners disclosure controls; background art cannot supply missing claim limitations)
- ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368 (Fed. Cir.) (specification describing only spike valves cannot later support spikeless claims)
- Honeywell Int’l Inc. v. United States, 609 F.3d 1292 (Fed. Cir.) (when specification teaches a broad technology, it may support other species in some contexts)
- Boston Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353 (Fed. Cir.) (in limited circumstances, well-known art can inform written-description analysis)
- Falkner v. Inglis, 448 F.3d 1357 (Fed. Cir.) (well-known information may supply specific details absent from the specification)