Keurig, Inc. v. Sturm Foods, Inc.: Court Rules No Infringement Due to Exhausted Rights
The United States Court of Appeals for the Federal Circuit affirmed a lower court’s decision holding Sturm did not infringe Keurig’s patents, because Keurig’s patent rights were exhausted.
Patent exhaustion is an affirmative defense to a claim of patent infringement, which is triggered, in some instances as in this case, when a patent owner authorizes a sale of a patented product that completely practices the claimed invention. The idea is that after an authorized sale of a patented product, the patent owner’s rights over that product should end by virtue of having provided the customer, client, or as in this case, the user of a product, with a proper license to use, sell, or do whatever the user desires with the rightfully purchased product. Although patent exhaustion has not been codified, it has remained valid case law since its inception in the mid to late 1800’s.
In this case, Keurig sought to hold Sturm accountable for the infringing use of their patented coffee makers, because Sturm provided special packets to be used with the Keurig coffee maker. Hence, had the affirmative defense not applied, Sturm would have been liable for induced infringement.
The patents involved in this case, Keurig’s patents on the coffee maker, and a patent on a method of making coffee, are Patent 7,165,488 (the “’488 patent”) and patent 6,606,938 (the “’938 patent”). The court in particular focused on claim 6 of the ’938 patent, which reads:
6. A method of brewing a beverage from a beverage medium contained in a disposable cartridge, comprising the following steps, in sequence:
(a) piercing the cartridge with a tubular outlet probe to vent the cartridge interior;
(b) piercing the cartridge with a tubular inlet probe;
(c) admitting heated liquid into the cartridge interior via the inlet probe for combination with the beverage medium to produce a beverage; and
(d) extracting the beverage from the cartridge interior via the outlet probe.
By asserting these method claims Keurig needed to prove that every time a user of their coffee machine was purchasing Sturm’s coffee packets from Sturm, rather than Keurig, each user was infringing and hence Sturm was liable as an inducer. Sturm however, was able to successfully claim the affirmative defense of patent exhaustion by showing that each of those users, had properly purchased an authorized license from Keurig when they purchased their coffee makers, and hence could not be liable for infringing on the use of their machines. Essentially, because once the user had purchased the coffee maker from Keurig, Keurig’s patent rights as to that user were exhausted, which meant that the user could use their machine with Sturm packets if they so desired.
Perhaps Keurig could have sought patents over the packets themselves, or perhaps that was not an option for whatever reason, but what is clear is that when procuring patents for a client, thinking about a potential infringer means thinking about potential inducers, and how the actual sale of the claimed product itself will affect the patent holder’s rights, such as in this case, where a sale exhausted Keurig’s and precluded them from asserting patent rights over packets made by another manufacturer, for their patented device.
Saul Acherman
Attorney at
JAFARI LAW GROUP®, INC.