Appeals from the United States District Court for the Western
District of Washington in No. 2:15-cv-00522-JPD, Magistrate
Judge James P. Donohue.
Allen Lowe, Lowe Graham Jones PLLC, Seattle, WA, argued for
plaintiff-cross-appellant. Also represented by Lawrence D.
William A. Delgado, Dto Law, Los Angeles, CA, argued for
defendants-appellants. Also represented by Ashley Lynn Kirk,
Willenken Wilson Loh & Delgado LLP, Los Angeles, CA.
Dyk, Reyna, and Hughes, Circuit Judges.
case involves claims of U.S. Patent No. 8, 720, 320
("the '320 patent") owned by Adrian Rivera and
Adrian Rivera Maynez Enterprises, Inc. (collectively,
"ARM") and U.S. Patent No. 8, 707, 855 ("the
'855 patent") owned by Eko Brands, LLC
("Eko"). The parties appeal and cross-appeal
various rulings made by the United States District Court for
the Western District of Washington in infringement
proceedings concerning the two patents. We affirm the
judgment of invalidity as to the asserted claims of the
'320 patent and the award of attorney's fees. We also
affirm the judgment of infringement as to the asserted claims
of the '855 patent.
owns the '320 patent, which describes an adaptor device
for use with Keurig® single-brew coffee machines or
similar brewers. The '320 patent describes single-brew
coffee machines as generally accepting one of two cartridge
formats: "pods," which are "small, flattened
disk-shaped filter packages of beverage extract" and
"larger cup-shaped beverage filter cartridges."
'320 patent, col. 1, ll. 17-21. The patent describes the
configuration used by a particular type of Keurig® coffee
machines (known as K-Cup® machines) as "inherently
limit[ed] [to] the use of . . . cup-shaped cartridges"
and that users of K-Cup® machines "would have to
purchase a different machine to brew beverage from
pods." Id. at col. 1, ll. 39-44. The '320
patent describes an "adaptor assembly configured to
effect operative compatibility between a single serve
beverage brewer [for use with cup-shaped cartridges] and
beverage pods." Id. at col. 1, ll. 6-9; see
also Rivera v. ITC, 857 F.3d 1315, 1316-17 (Fed. Cir.
2017) (discussing the '320 patent in detail).
August 4, 2014, ARM filed a complaint against Eko and ten
other respondents at the International Trade Commission
("ITC") alleging infringement of claims 5-8 and
18-20 of the '320 patent and seeking a limited exclusion
order and cease and desist order. In proceedings involving
other respondents, the ITC found that claims 5-7, 18, and 20
of the '320 patent were invalid for lack of written
description, and this court affirmed. Rivera, 857
F.3d at 1323. However, the ITC made no invalidity
determination concerning claims 8 and 19 (those claims had
been withdrawn as to respondents other than Eko). Eko
defaulted in the ITC proceedings with respect to ARM's
allegations that it infringed claims 8 and 19, and the ITC
issued a limited exclusion order and cease and desist order.
April 2, 2015, Eko filed this action against ARM in the
United States District Court for the Western District of
Washington. Eko sought (1) a declaratory judgment of
non-infringement as to claims 8 and 19 of the '320
patent, and (2) a declaratory judgment that claims 8 and 19
were invalid as obvious. ARM counterclaimed alleging
infringement of claims 8 and 19. The district court issued a
Markman ruling construing various claim terms. Eko
filed for summary judgment of noninfringement and
obviousness. The district court granted Eko declaratory
judgment of noninfringement but denied Eko's motion for
summary judgment as to obviousness, finding that there
remained disputed issues of material fact. After a five-day
jury trial, the jury found claims 8 and 19 of the '320
patent to be invalid as obvious. During these proceedings,
the district court awarded Eko attorney's fees associated
with obtaining a judgment of noninfringement and obviousness.
ARM appeals the district court's findings of
noninfringement and obviousness, as well as the district
court's fee awards.
with its declaratory judgment claims as to the '320
patent, Eko asserted an infringement claim against ARM with
respect to claim 8 of the '855 patent owned by Eko, which
describes a reusable filter cartridge device for use with
single-serve beverage brewing machines. Unlike typical filter
cartridges, which must be pierced by the beverage brewing
device during operation, the device described by the '855
patent allows for the operation of the brewing machine
without piercing the filter cartridge, thereby allowing the
device to be reused multiple times. The district court
entered an order construing claim 8 of the '855 patent,
and ARM stipulated to infringement based on the district
court's claim construction. At trial, the jury awarded
Eko compensatory damages but found that ARM did not willfully
infringe, and the district court did not award enhanced
damages. ARM appeals the district court's judgment of
infringement. Eko cross-appeals the jury's finding of no
willful infringement and the district court's denial of
enhanced damages. We have jurisdiction under 28 U.S.C. §
review the jury's verdict for substantial evidence, and
the jury instructions de novo. Abbott Labs. v. Syntron
Bioresearch, Inc., 334 F.3d 1343, 1349 (Fed. Cir. 2003).
We review a district court's grant of summary judgment de
novo. Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146 (Fed. Cir. 2016). "We review the
district court's ultimate construction de novo, and any
underlying factual findings supporting the construction for
clear error." Ethi-con Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015)
(citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 574
U.S. 318, 331 (2015)). "The ultimate determination of
obviousness presents a legal question subject to de
novo review, but 'explicit and implicit'
subsidiary factual determinations made by the jury-including
the scope and content of the prior art-are reviewed for
substantial evidence." Intellectual Ventures I LLC
v. Motorola Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir.
2017) (citing Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)). We
review the district court's award of attorney's fees
under 35 U.S.C. § 285 for abuse of discretion.
Highmark Inc. v. Allcare Health Mgmt. Sys., 572 U.S.
559, 561 (2014).
ARM's '320 Patent
argues that the jury verdict that claims 8 and 19 of the
'320 patent were invalid for obviousness should be set
aside because the district court erred in its claim
construction, and that under the proper construction, U.S.
Patent No. 3, 878, 722 to Nordskog ("Nordskog")
does not disclose a fully enclosed space and the obviousness
verdict cannot stand. The district court construed the term
"brewing chamber" in claims 5 and 18, which claims
8 and 19 depend from, to mean "a compartment in which
brewing occurs." Eko Brands, LLC v. Adrian Rivera
Maynez Enters., Inc., No. 2:15-cv-00522-JPD (W.D. Wash.
Feb. 24, 2016), ECF No. 42 at 10 ("Claim
Construction Order"). The district court explained
that "[w]hile the plain and ordinary meaning of the word
'chamber' certainly conveys the idea of a compartment
or defined area, it does not necessarily have to be sealed or
contends that the district court erred when it rejected
ARM's proposed construction of "brewing
chamber." That construction required a "sealed or
fully-enclosed" space. ARM makes several arguments in
favor of its more limited construction.
ARM directs us to two patents assigned to Keurig that are
incorporated by reference into the '320 patent: U.S.
Patent No. 5, 325, 765 ("the Keurig '765
patent") and U.S. Patent No. 6, 606, 938 ("the
Keurig '938 patent").ARM argues that because these
prior art references depicted enclosed brewing chambers, the
term brewing chamber in the '320 patent must also be
the claims of the '320 patent, the claims of the Keurig
'765 patent specifically describe the brewing chamber as
being sealed. Keurig '765 patent, col. 4, ll. 35-42
(describing the brewing chamber as being defined by two
"components," wherein one "component which may
be . . . closed to coact in sealing engagement with [the
other component defining the brewing chamber]"). The
Keurig '938 patent includes a "brewing chamber
44," but Figures 3 and 4 show that the "brewing
chamber" is not a fully-enclosed space. Thus, nothing in
the incorporated patents requires that the term "brewing
chamber," standing alone, be fully sealed. In fact, they
suggest the opposite-that the term "brewing
chamber" standing alone does not require sealing.
ARM argues that certain embodiments in the specification
require us to apply ARM's proposed construction. ARM
points to passages of the patent specification that describe
specific embodiments that have fully-enclosed structures. But
ARM ignores other embodiments in the specification, which
clearly show that a "brewing chamber" is not fully
enclosed. For example, Figure 6, "a schematic
illustration of a cross-sectional view of a pod brewing
chamber of one preferred embodiment of the present
invention," '320 patent, col. 3, ll. 37-39, depicts
a "lower opening 614," id. at col. 7, ll.
46-47. Accepting ARM's construction would exclude such a
preferred embodiment from the scope of the claim. SynQor,
Inc. v. Artesyn Tech., Inc., 709 F.3d 1365, 1378-79
(Fed. Cir. 2013) ("A claim construction that
'excludes the preferred embodiment is rarely, if ever,
correct and would require highly persuasive evidentiary
support.'" (quoting Adams Respiratory
Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290
(Fed. Cir. 2010)). The specification thus supports the
district court's construction.
ARM suggests that because the specification of the '320
patent notes that the brewing chamber must "trap"
hot water, it must be a fully enclosed chamber. As the patent
makes clear, it is the "beverage packet" or
"pod," not the brewing chamber, that traps hot
water. '320 patent, col. 1, ll. 14-17 ("Once the
beverage packet is placed in the brewing chamber, the machine
injects hot water into the packet . . . .").
district court correctly determined that the term
"brewing chamber" in the '320 patent does not
require a fully-enclosed space. See Phillips v. AWH