On December 26, 2023, the United States Court of Appeals for the Federal Circuit issued its decision in K-Fee System GMBH v. Nespresso USA, Inc. While nominally a case related to coffee makers, its teachings are highly applicable to life science companies as they tend to file large numbers of ex-U.S. patent cases. The lesson: under certain circumstances, a court may consider statements made in patent prosecution proceedings outside of the U.S. when construing the scope of related U.S. claims, and as such those statements should be carefully weighed against implications in your U.S. patent portfolio.
K-fee System GmbH (“K-fee”) owns U.S. Patent Nos. 10,858,176, 10,858,177, and 10,870,531. K-fee filed suit against Nespresso USA (“Nespresso”) in the Central District of California (“District Court”) alleging that Nespresso’s coffee system infringed claims in each of the three patents. Nespresso filed a motion for summary judgment of non-infringement, arguing that its products did not infringe the asserted patent claims. The District Court agreed and granted Nespresso’s motion for summary judgment. K-fee appealed to the Federal Circuit, which agreed with K-fee that the District Court erred in construing certain terms in the K-fee claims. The Federal Circuit remanded the case back to the District Court for further proceedings.
Previously, Nespresso had filed an opposition against a European patent related to the three U.S. patents K-fee asserted in its U.S. case. K-fee filed a motion asking the EPO to deny the opposition. K-fee argued that its claims were patentable over certain prior art cited by Nespresso based on the plain meaning of the term “barcode.” In its motion, K-fee provided what it alleged to be the plain meaning of that term. K-fee provided the opposition filings to the USPTO, including the motion containing this claim construction argument. The District Court and the Federal Circuit would both treat K-fee’s motion as intrinsic evidence as it had been made part of the U.S. file history by K-fee.
In deciding the motion for summary judgment in favor of Nespresso, the District Court referred to K-fee’s definition of barcode provided in the opposition filings. Accordingly, the District Court accepted Nespresso’s argument that its products fell outside of the asserted claims as interpreted according to the K-fee’s proffered definition. K-fee appealed to the Federal Circuit, arguing that the District Court’s narrowing of the term “barcode” was effectively a holding of disclaimer based on its prior arguments to the EPO, which, K-fee argued, did not meet the standard for disclaimer. In finding in favor of K-fee, the Federal Circuit held that the District Court’s conclusion regarding the definition of barcode based on K-fee’s EPO statements “was too confining,” agreeing with K-fee that its arguments to the EPO did not rise to the level of disclaimer. The case was again remanded to the District Court for further proceedings.
The Federal Circuit concluded its opinion by writing “we note that K-fee makes the legal argument that a conclusion of disclaimer cannot be premised on statements made when defending a related but distinct patent against a different legal standard—here the European standard for novelty. We do not address that contention because we have concluded that K-fee’s statements were too unclear to constitute disclaimer.”
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