K-fee System GMBH V. Nespresso USA, Inc. ' The Importance Of Context In Claim Construction

• Published date: 10 January 2024
• Subject Matter: Intellectual Property, Patent
• Law Firm: Haug Partners
• Author: Mr Jonathan Herstoff and Conrad Stumpf

The Federal Circuit provided its latest guidance with respect to prosecution disclaimer in K-fee System GMBH v. Nespresso USA, Inc., 2023 WL 8882383, ' F.4th ' (Fed. Cir. Dec. 26, 2023). K-fee involved patents covering coffee-machine portion capsules that used a "barcode" to "prevent the capsules from being used in incompatible machines." K-fee, 2023 WL 8882383 at *1. During claim construction, the district court found "that K-fee had 'argued strenuously' before the EPO [(European Patent Office)] for a particular 'plain and ordinary meaning,' which excluded 'bit codes''codes made up of two binary symbols" 'from the plain and ordinary meaning of "barcode." K-fee, 2023 WL 8882383 at *2. The key portion of the EPO record included statements made by K-fee to distinguish a particular piece of prior art referred to as the "Jarisch" reference. K-fee, 2023 WL 8882383 at *2. Based on its interpretation of K-fee's EPO submission, the district court construed the plain and ordinary meaning of "barcode" as "a code having bars of variable width, which includes the lines and gaps," but "does not include the type of bit code disclosed in Jarisch." K-fee, 2023 WL 8882383 at *2.

Based on this construction, Nespresso moved for summary judgment of non-infringement, arguing that "its accused products operated identically to the Jarisch capsules that K-fee had distinguished before the EPO in that both used a machine-readable code having only two binary symbols," and therefore "did not meet the 'barcode' limitations of the claims." K-fee, 2023 WL 8882383 at *2. In granting the motion, the district court "reiterated that bit codes using only two symbols could not be barcodes, placing particular weight on K-fee's statement to the EPO that Jarisch discloses a 'bit code,' but not a barcode, because the barcode . . . is always constructed of bars having variable widths, and therefore contains more than only two binary symbols." K-fee, 2023 WL 8882383 at *2 (citations omitted).

K-fee appealed, arguing that the district court improperly narrowed the ordinary meaning of "barcode" as excluding codes using only two symbols (i.e. bit codes) by implicitly finding prosecution disclaimer based on K-fee's statements to the EPO. K-fee, 2023 WL 8882383 at *3. According to K-fee, "its statements to the EPO did not meet the standard for disclaimer." K-fee, 2023 WL 8882383 at *3. In response, Nespresso argued that the district court properly relied on "the prosecution history to clarify the...