Federal Circuit Avoids Deciding Whether Statements to Foreign Patent Office Can Disavow U.S. Claim Scope

K-FEE SYSTEM GMBH v. NESPRESSO USA, INC.

Before Taranto, Clevenger, and Stoll.  Appeal from the U.S. District Court for the Central District of California.

Summary: The Federal Circuit did not need to decide whether statements to the European Patent Office (EPO) can disavow claim scope in a U.S. patent because the statements in this case were too ambiguous to constitute disavowal.

K-fee sued Nespresso for infringing three patents that claim coffee capsules with a barcode that controls a coffee machine’s functionality.  The district court construed the term “barcode” to exclude bit codes using only two binary symbols, based on K-fee’s statements to the EPO about a related European patent application.  These statements were part of the intrinsic record before the USPTO because K-fee submitted the EPO records to the examiner during U.S. prosecution.  Based on the district court’s construction, Nespresso moved for summary judgment of non-infringement, arguing that its products do not meet the barcode limitations.  The district court agreed and granted summary judgment.

The Federal Circuit reversed the district court’s construction and summary judgment.  The Federal Circuit explained that the district court’s construction ignored some of K-fee’s statements to the EPO, which undermined the alleged disavowal of bit codes.  Even if statements to the EPO could limit U.S. claim scope, K-fee did not act with the clarity required to either prescribe a new meaning to the term “barcode” or disclaim any portion of the apparent meaning of “barcode.”

Editor: Sean Murray