Thou shalt not take photos or make recordings in the courtroom

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Case No. O2022_003 | Hearing of 14 June 2023 | ‘Vertuo® / assignment action’

Nestlé and K-fee have currently locked jaws on various issues. First, K-fee asserts that Nestlé infringes on three patents with their Vertuo® pods, i.e.

See this Blog here for some background information. The FPC has dismissed this claim only recently; see here. (I will review this judgment in more detail on this Blog soon; stay tuned.) K-fee will likely appeal to the Supreme Court.

Separately, Nestlé has sued K-fee for assignment / unlawful usurpation of the very same patents. While the Swiss national validations of EP 362, EP 207 and EP 209 are the subject of proceedings at the Swiss FPC, the remainder of the pretty extensive patent family is being litigated at the Regional Court of Düsseldorf (Germany); see K-fee’s redacted Statement of Claim.

The hearing in the Swiss proceedings took place earlier this week, on June 14. I could not make it to the hearing, (un)fortunately. I’m currently on holiday with my three blondes … 😎. Which is why I cannot really report much about the current state of play. However, I have been told that a member of the public took pictures and made recordings during the hearing. Better don’t do this. It’s strictly prohibited; Art. 15 PR-PatC. (If you wish to make the argument that this prohibition does not apply because the hearing was not “in the rooms of the FPC”, go for it. I wouldn’t.) The President expelled the misbehaving person from the court room. To the best of my knowledge, it’s the first time that this happened.

Darn, something actually happens and I’m not there!

✍ MW

BIBLIOGRAPHY

Case No. O2022_003 | Hearing of 14 June 2023 | ‘Vertuo / assignment action’

Société des Produits Nestlé SA
./.
K-fee System GmbH

Panel of judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Lorenzo PARRINI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

STATEMENT OF CLAIM 

Assignment action in Germany

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K-fee ./. Nestlé Nespresso: Take-aways from the main hearing

Reading time: 7 minutes

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

WHAT YOU NEED TO KNOW

Judge-rapporteur’s expert opinion:
The Vertuo® pods feature a barcode, i.e. K-fee’s patents in suit are infringed. However, they are invalid.

A request for recusal of the judge-rapporteur was still pending at the date of the hearing.

K-fee System GmbH has sued Nestlé Nespresso SA for infringement of three European patents, i.e.

K-fee logo

The allegedly infringing items are Nespresso’s Vertuo® pods. Please see this Blog here for some further background information about the matter.

I have attended the main hearing on 22 March 2023 (apologies for the delayed report; it’s been pretty busy lately). The courtroom was packed: Nestlé appeared with seven people; but that was even topped by K-Fee’s team that was nine people strong.

Nespresso logo

In a nutshell, I understood from the pleadings that the expert opinion of the judge-rapporteur had some good news for both sides: The patents were infringed (i.e., the Vertuo pods indeed carry a barcode), but they are invalid (at least) in view of  WO 2010/026053 A1. Note that the summary judgment of non-infringement in co-pending U.S. proceedings held the exact opposite with respect to the Vertuo® code, i.e. that it is not a barcode but rather a bitcode.

This set the stage for the pleadings.

(In)Validity of the patents

K-Fee’s first pleadings mainly dealt with validity of the patents in suit. Novelty over WO 02/28241 A1 and EP 1 974 638 A1 was relatively quickly dealt with. EP 638 deals with color codes on coffee pods; but it holds in para. [0010] that colored barcodes are not meant thereby. At one point, the President wondered whether that, maybe, only meant that colored barcodes are not claimed — but they are nevertheless mentioned, explicitly. Nestlé did not cover novelty in their pleadings at all.

A clone of the He-Pod(?)

Obviousness was a bigger issue. K-Fee started off with an illustration of how far the various ‘closest’ prior art documents are away from the invention as claimed: A spiral galaxy with the invention as the host star, and with some prior art documents lightyears away. The EPO first instance bodies typically consider just a single prior art document as the ‘closest’ one. K-Fee held that this is not just because they were not in the mood of doing the whole exercise over and over again. (A smirk flitted across many faces.) Be that as it may, the analysis was in fact carried out from various ‘closest’ prior art documents. In particular, both sides set out their respective arguments for (non-)obviousness in view of WO 2010/026053 A1; and EP 512 468 A1  in further view of WO 02/28241 A1.

As to WO 053, a barcode is mentioned but its location on the pod is not specified. The judge-rapporteur apparently assumed that the barcode would have to be read out when the pod is enclosed in the brewing cage. K-fee disagreed. Further, the judge-rapporteur held that the barcode could only be put on the pod at very few locations when it has to be read out in the cage, and that the underside of the rim was the obvious one. Again, K-fee disagreed. I remain keen to see how this plays out.

With respect to EP 468 as closest prior art, I understood that Nestlé disagreed with the judge-rapporteur’s definition of the objective technical problem. Apparently, the dissent is inter alia about whether it matters that the objective technical problem is already foreshadowed in the closest prior art. Maybe, we will get this clarified now; see my thoughts on this issue here and here.

infringement: is it a barcode?

I understood from the pleadings that the judge-rapporter construed a barcode (roughly) as follows:

    1. it comprises bars and gaps; and
    2. it uses the width of the bars and gaps
    3. as an optically readable pattern for providing information.

The parties apparently agreed with this definition. But they have a totally different understanding of what it means. Nestlé held that they simply used 140 segments on the rim of the pod, each segment covering a fixed 2.57°. In Nestlé’s view, this code does not make use of ii), i.e. of (varying) width of bars and gaps. On the other hand, K-fee (and, in my understanding, also the judge-rapporteur) held that, at the face of it, any change of a segment would result in a change of the apparent width of a gap or a bar — which is all that is required by ii).

In any event, Nestlé held that the term ‘code’ means more than just a series of bars and gaps. At the face of it, this is just a pattern. It only becomes a code by way of a set of rules how to convert it to meaningful information. Nestlé further held that according to the CGK the absolute width of a bar in a barcode is irrelevant. The width of a bar only makes sense when interpreted in relation to the width of respective other bars of the barcode.

The President made an interesting remark at one point. He questioned both sides:

What if the parties agree on a certain claim construction that the court finds to be incorrect? Is the court bound by it?

I am not sure whether there is an easy answer. Maybe, it’s worth a headnote(?).

Request for Recusal

I understood from the pleadings that K-fee had requested recusal of the judge-rapporteur. At the day of the hearing, the Administrative Commission of the FPC had not yet decided on this request. I take from this that the request had been filed at a very late stage of the proceedings, most likely only after receipt of the judge-rapporteur’s expert opinion. The President informed the parties that a decion on this request will be handed down soon, well before the judgment on the merits.

Stakes are high

I concluded from the pleadings that K-fee had been willing to license the patents. No numbers were mentioned, but this offer was apparently rejected by Nestlé as too high by far («You can’t be serious!»).

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

K-fee System GmbH
./.
Nestlé Nespresso SA

Panel of judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Lorenzo PARRINI

Court Clerk:

    • Sven BUCHER

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

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Nespresso’s Vertuo pods: Barcodes that aren’t barcodes?

Reading time: 6 minutes

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

Coffee pods are being litigated again! K-fee System GmbH has sued Nestlé Nespresso SA for infringement of three European patents, i.e.

K-fee logo

K-Fee belongs to the Krüger group of companies. Krüger recently partnered with Coca-Cola in the coffee pod business, i.e. with the production of pods that are compatible with the (classic) Nespresso® system.

Vertuo pod

All patents at stake in the present litigation feature a barcode on the pods, according to the independent claims.

The allegedly infringing pods are Nespresso® Vertuo® pods. And, indeed, there is a strange pattern on the rim of the Vertuo® pods. But … is it a barcode? With respect to infringement, that seems to be what the whole argument boils down to.

The Duck Test is positive, I’d say. And even Nespresso’s website says it’s a barcode:

Vertuo uses each capsule’s barcode to work out what temperature, quantity of water and number of revolutions are required to extract the perfect cup of coffee.

Nespresso Vertuo website

But things are more complicated than it seems, sometimes. If it looks like a duck and quacks like a duck but it needs batteries, you probably have the wrong abstraction. The Canard de Vaucanson wasn’t actually a duck.

Nespresso logo

The parties are also litigating in the U.S. The California Central District Court has already issued a Final (Summary) Judgment of Non-Infringement of the corresponding U.S. patents 10,858,176, 10,858,177, and 10,870,531 on 28 June 2022 (case no. CV 21-3402-GW-AGRx). K-Fee appealed to the CAFC (case no. 2022-2042). The proceedings are still pending. Meanwhile, the Joint Appendix (partly redacted; part I and part II) that has been filed with the CAFC is a wealth of information. Apparently, the California Central District Court applied a claim construction that differentiates between a ‘bit-code’ and a barcode:

It was critically important what K-Fee had submitted elsewhere as the interpretation of the Jarisch reference , i.e. what K-Fee had submitted in EPO opposition/appeal proceedings. Note that the Jarisch reference is a Nestec patent application, WO 2011/141532 A1. Here is how the EPO Opposition Division summarized K-Fee’s pleadings re D1, i.e. Jarisch (WO 532):

My best guess is that the Vertuo® pods make use of the Jarisch (WO 532) principle: The Vertuo system was developed in co-operation with Helbling, apparently making use of a lot of 0s and 1s. Further, there is an interesting thread on Reddit about the Vertuo® barcode, i.e. ‘Breaking the Nespresso Vertuo Barcodes’ (part I, II and III). There’s even a Vertuo barcode generator available for download on Github.

But will the FPC construe the claimed feature of a barcode to not cover a ‘bit-code’, as the EPO and the U.S. court did? That’s not a given. We shall see.  If it did, that would be a home-run for Nespresso. But things might get (much) more complicated when the FPC construes barcode in a way that also covers ‘bit-codes’. 

Accordingly, as a matter of precaution, Nespresso also asserts that the patents in suit are invalid for lack of novelty over WO 02/28241 A1 and EP 1 974 638 A1; and obviousness in view of WO 2007/122208 A1WO 2010/026053 A1 and  US 2010/0078480 A1.

As a last resort, should the FPC issue an injunction, Nespresso countersued K-Fee for a compulsory license under Art. 37 PatA (lack of patentee’s own use in Switzerland) and Art. 40 PatA (public interest).

EF logo

Interestingly, the EPO dockets reveal that Nestlé has sued K-Fee for assignment of the patents at stake before the Regional Court Düsseldorf; case no. 4b O 1/22. The Statement of Claim is heavily truncated and redacted. However, from K-Fee’s statement filed with the EPO I understand that Nestlé / Nespresso and K-Fee have no contacts in the coffee pod business. However, Nestlé apparently argues that K-Fee got hold of Nestlé’s prior knowledge of the claimed invention via Eugster Frismag. EPO proceedings are currently stayed.

The hearing at the FPC is scheduled for 22 March 2023. It will be interesting to hear how the judge-rapporteur assessed the facts at hand.

✍ MW

BIBLIOGRAPHY

Case Nos. O2021_006 and O2021_015 | Hearing of 22 March 2023 | ‘Vertuo’

K-fee System GmbH
./.
Nestlé Nespresso SA

ANNOUNCEMENT

PATENTS IN SUIT

EP 3 023 362 B1:

EP 3 521 207 B1:

EP 3 521 209 B1:

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Ethical Coffee Company ./. Nestlé et al.

ECC’s complaint against Nestlé et al. on the basis of CH 701 971 B1 had not been successful; see this Blog here for details on the first instance judgment of the FPC and the Supreme Court decision here.

The claim at stake inter alia required that

[…] said cage (5) is arranged in such a way as to deform, at least partially, any capsule (1), made of a material that can be deformed upon contact with hot water, which is placed in the cage (5) so that the capsule (1) is retained in the cage (5) following its contact with hot water.

An interesting aspect in this case was the meaning of the term ‘any capsule.’ The FPC held that the attacked embodiments evidently did not retain toute capsule’ / ‘any capsule’. The Supreme Court likewise held that there is apparently no specific meaning of the term ‘any capsule’ in the specific technology, and that the literal meaning was perfectly clear. Since it had been beyond dispute that at least some capsules were not retained, the feature was held to be not fulfilled.

The Regional Court Dusseldorf now came to a different conclusion in its assessment of the parallel EP 2 312 978 B1; see 4b O 9/16. Note that the Swiss judgments had been brought to the attention of the Dusseldorf court; see ¶75. The Dusseldorf court holds that such an interpretation would essentially make the claim meaningless. The skilled person would not understand the claim in this way, in particular since none of the embodiments shown in the patent would be covered by that definition.

Der Fachmann erkennt, dass der Begriff nicht in dem Sinne zu verstehen sein kann, dass damit 100 % aller Kapseln gemeint sind, mit denen in der betreffenden Vorrichtung ein Getränk zubereitet werden kann. […]  Ausreichend ist […], dass der Käfig in Bezug auf eine vorgegebene Kapselform und -größe so ausgestaltet ist, dass er diese Kapseln […] zumindest teilweise verformen und festhalten kann. Bei den Kapseln der vorgegebenen Größe und Form, auf die die Abmessungen des Käfigs patentgemäß abgestimmt werden, handelt es sich um ‘jede Kapsel’ […].

Bei einem anderslautenden Verständnis, wie es das Schweizer Bundesgericht offenbar seiner Auslegung zugrunde legt […] und wonach ‘jede Kapsel’ im Sinne von 100 % aller Kapseln, mit denen in der Vorrichtung ein Getränk zubereitet werden kann, zu verstehen ist, liefe der Patentanspruch zudem im Wesentlichen leer. […]  In seinem Bestreben, dem Patent einen sinnvollen Gehalt zu entnehmen, wird der Fachmann daher nicht auf die beschriebene Sichtweise zurückgreifen.  Überdies würde das dargestellte Verständnis dazu führen, dass keines der Ausführungsbeispiele mehr vom Gegenstand des Patents erfasst wäre. […] Eine Auslegung des Patentanspruchs, die zur Folge hätte, dass keines der in der Patentschrift geschilderten Ausführungsbeispiele vom Gegenstand des Patents erfasst würde, kommt allerdings nur dann in Betracht, wenn andere Auslegungsmöglichkeiten, die zumindest zur Einbeziehung eines Teils der Ausführungsbeispiele führen, zwingend ausscheiden oder wenn sich aus dem Patentanspruch hinreichend deutliche Anhaltspunkte dafür entnehmen lassen, dass tatsächlich etwas beansprucht wird, das so weitgehend von der Beschreibung abweicht […]. Angesichts des bereits dargestellten widerspruchsfreien und sinnvollen Verständnisses des Merkmals, das dem Fachmann vorliegend zur Verfügung steht, wird er auf eben jenes zurückgreifen.

It is always interesting to see how the various courts address the same question differently. In this case, the Swiss courts apparently took a rather strict approach with a strong focus on the wording of the claim, while the Regional Court Dusseldorf took a more liberal approach of claim construction.

The floor is yours for comments …

Reported by Martin WILMING

THE LG D’DORF DECISION 

Download (PDF, 204KB)

THE PATENT IN SUIT

Download (PDF, 235KB)

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