Coffee pod machines are big business in the U.S. and around the world.¹ Unlike traditional coffee and espresso machines, these pod machines tend to make coffee brewing for the average consumer easier and more convenient. The Federal Circuit recently issued a precedential opinion in K-fee System GmbH v. Nespresso USA, Inc. reversing a district court’s claim construction of the term “barcode” in a patent directed to coffee pod machines.² At issue was whether K-fee’s statements to the European Patent Office distinguishing its patents’ “barcode” limitation from a prior art reference amounted to a clear disclaimer of Nespresso’s accused products. Nespresso argued that K-fee’s statements to the EPO disclaimed the accused products’ use of a binary bit code. In finding no clear disclaimer, the Federal Circuit held that “a barcode is defined by its visual appearance” and K-fee’s statements to the EPO were not clear enough to support disclaimer. The Federal Circuit’s opinion provides important guidance on making prosecution history disclaimer arguments where the patentee has made both visual and claim language distinctions to overcome prior art.

I. Background
K-fee’s patents at issue describe and claim coffee-machine portion capsules, such as single-serve coffee pods, that display information encoded in a “barcode.”³ According to the patents, the barcode, when read by a device associated with the coffee machine, can prevent the capsules from being used in incompatible machines or specify capsule-specific brewing parameters.⁴   

On April 21, 2021, K-fee filed suit against Nespresso USA in the Central District of California alleging infringement of the ’176 Patent and two other related patents (collectively, the “Asserted Patents”).⁵ Nespresso’s foreign affiliate, Nestec S.A., had earlier challenged the validity of K-fee’s related European patent, EP 3023362.⁶ Nestec argued to the EPO that WO 2011/141532 A1 (“Jarisch”), which is Nestec’s own international application, was invalidating prior art to K-fee’s related European patent.⁷ Like EP 3023362 and the Asserted Patents, Jarisch discloses a beverage capsule displaying information, “by means of a code,” that the coffee machine can read and use.⁸ Nestec contended that this code was a “barcode,” a term used by K-fee in EP 3023362 and the Asserted Patents.⁹ In response, K-fee distinguished Jarisch to the EPO in two primary ways: (1) that “the [relevant artisan] at all times defines the term ‘barcode’ as a line code constructed of bars having variable widths”; and (2) that the teaching of Jarisch did not meet this definition because Jarisch “discloses a ‘bit code,’ but not a barcode, because the barcode—as shown above—is always constructed of bars having variable widths and therefore contains more than only two binary symbols such as ‘0’ and ‘1.’”¹⁰ 

The district court relied on K-fee’s statements to the EPO in issuing a claim-construction order in which it construed “barcode,” a term present in every claim of the Asserted Patents.¹¹ Because the EPO prosecution records were disclosed to the USPTO in prosecuting the Asserted Patents, the district court considered them apart of the intrinsic record and concluded that K-fee had argued for a particular “plain and ordinary meaning,” which excluded “bit codes”—codes made up of two binary symbols.¹² Accordingly, the district court construed “barcode” to have the following construction: 

plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps), the scope of which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in Jarisch/D1).¹³ 

Based on that claim construction of “barcode,” the district court granted summary judgment of non-infringement of the accused Nespresso products because they 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.¹⁴ K-fee subsequently appealed to the Federal Circuit.

II. "Barcode" Is Defined by Its Visual Appearance
In reversing the district court, the Federal Circuit agreed with K-fee and construed “barcode” to refer to code messages consisting of a linearly arranged sequence of bars of visually non-uniform widths (or a coding system producing such messages).¹⁵ The Federal Circuit first considered the plain and ordinary meaning of “barcode” and then analyzed whether K-fee surrendered claim scope in its arguments to the EPO by clear disclaimer or redefinition.¹⁶ Having reversed the district court’s claim construction, the Federal Circuit concluded that the infringement analysis under the new construction will “necessarily differ” and granted summary judgment.¹⁷ 

Ordinary Meaning: Under this step, the Federal Circuit analyzed what a relevant artisan would understand the meaning of “barcode” in the field to be.¹⁸ Relying on sources such as Wikipedia, barcode standards, and textbooks that K-fee had cited to the EPO, the Federal Circuit found that there is a common emphasis on “bars” or “stripes of varying widths.”¹⁹  Although K-fee did state to the EPO that a barcode “is always constructed of bars having variable widths and therefore contains more than only two binary symbols such as ‘0’ and ‘1,’” the Federal Circuit held that the district court erred in finding that a barcode must “contain[ ] more than only two binary symbols” and, by extension, that any code that contains only two binary symbols could not be a barcode.²⁰ Critically, although K-fee suggested that a consequence of being “constructed of bars having variable widths” would be the existence of “more than only two binary symbols,” the Federal Circuit found that “the reason [K-fee] gave for Jarisch not disclosing a barcode was that Jarisch’s messages were not ‘constructed of bars having variable widths’”—i.e., they did not have the same visual appearance.²¹ The Federal Circuit concluded that the “evidence persuades us that a relevant artisan identifies a barcode by appearance and not by other criteria such as a particular encoding of data of the sort reflected in the district court’s claim construction.”²²  

No Clear Lexicography or Disclaimer: After finding that a relevant artisan would define a barcode by appearance, the Federal Circuit next considered whether “despite the apparent ordinary meaning evident from the intrinsic evidence, K-fee ‘act[ed] with sufficient clarity’ before the EPO to ‘disclaim ... [the] plain meaning or prescribe a special definition.’”²³     

First, the Federal Circuit rejected Nespresso’s argument that K-fee acted as its own lexicographer. The Federal Circuit held K-fee did not clearly set forth a definition of “barcode” other than its plain and ordinary meaning because K-fee consistently argued that barcode was defined by its ordinary meaning and that its statements to the EPO were far from clear.²⁴

Second, the Federal Circuit rejected Nespresso’s argument of clear disclaimer because K-fee’s statements to the EPO “were not clear and, if anything, were decidedly ambiguous.”²⁵ Nespresso had attempted to rely on K-fee’s statement that a barcode “contains more than only two binary symbols such as ‘0’ and ‘1’” to support clear disclaimer. According to the Federal Circuit, however, K-fee’s other statements to the EPO “demonstrate[d] that the district court’s conclusion was too confining.”²⁶ Elsewhere in the same EPO filing, K-fee noted that “a barcode can be, but is not necessarily, a bit code”; and “while the barcode is a ‘bit code,’ it is also a ‘special case’ and therefore represents a subset of the ‘bit code.’”²⁷ Thus, the Federal Circuit concluded that “[t]he only thing K-fee clearly distinguished before the EPO was Jarisch itself, which nowhere declares that its messages have bars of variable widths.”²⁸ 

III. KEY TAKEAWAYS FOR PATENT PRACTITIONERS
K-fee offers patent practitioners important guidance in making or defending against patent prosecution history disclaimer arguments.

• Account for both visual and textual distinctions that the patentee has made in distinguishing a piece of prior art. K-fee rejects the notion that the plain and ordinary meaning of a claim term cannot be defined by its visual appearance.
• Consider the patentee’s prior arguments as a whole. Although K-fee made one statement to the EPO that appeared to Nespresso to be a clear disclaimer of claim scope, as shown in K-fee, courts may consider contrary statements in the prosecution history to eliminate a finding of clear disclaimer.

[1] See, e.g., Ryan Baker, How Nespresso has made gains in the Keurig-dominated U.S. coffee pod market, CNBC (Dec. 1, 2023, 8:00 AM), https://www.cnbc.com/2023/12/01/nespresso-made-gains-in-keurig-dominated-us-coffee-pod-market.html.
[2] No. 2022-2042, 2023 WL 8882383, at *8 (Fed. Cir. Dec. 26, 2023) (K-fee).
[3] See K-fee, 2023 WL 8882383, at *1 (citing U.S. Patent No. 10,858,176 (the “’176 Patent”) col. 1 ll. 11–34, 60–62, col. 8 ll. 54–55, col. 12 l. 67–col. 13 l. 2).
[4] Id. (citing ’176 Patent col. 3 ll. 23–27).
[5] K-fee Sys. v. Nespresso USA, Inc., No. CV 21-3402-GW-AGRX, ECF No. 1 (C.D. Cal. April 21, 2021).
[6] K-fee, 2023 WL 8882383, at *4.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] K-fee Systems GmbH v. Nespresso USA, Inc., No. 2:21-cv-03402, 2022 WL 2826443, at *5 (C.D. Cal. March 10, 2022) (Claim Construction Order).
[12] K-fee, 2023 WL 8882383, at *2 (citing Claim Construction Order at *8).
[13] Id.
[14] See id.
[15] Id. at *8.
[16] Id. at *4.
[17] Id. at *8.
[18] Id. at *4.  
[19] Id. at *6. 
[20] Id. at *5.
[21] Id.
[22] Id. at *6. 
[23] Id. (quoting World Class Technology Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014)).
[24] Id.
[25] Id. at *7. 
[26] Id. at *5. 
[27] Id.  
[28] Id. at *7. 

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