In a May 24, 2013 ruling, a U.S. District Court found that the design of the OneCup disposable pouches sold by the Rogers Family Company is different than that of Keurig’s K-Cup coffee packs. Accordingly, the Court dismissed Keurig’s patent suit against the California roaster. Thus, the Rogers Family Company is free to sell their OneCup products for use in Keurig brewers.
Keurig Inc. v. JBR Inc., No. 1:11-cv-11941-FDS, U.S. District Court, District of Massachusetts (Boston) is a patent dispute surrounding single cup coffee brewers and individual cartridges containing ground coffee. Keurig alleged that JBR Inc. d/b/a Rogers Family Company (Rogers) infringed three Keurig patents. The first patent is the design patent Keurig holds for its beverage cartridges (K-Cup coffee packs), which Keurig says is infringed by Rogers’ OneCup pouches. The other two are the apparatus and method claims in patents Keurig holds for its single cup brewers, which it argued were indirectly infringed by the manufacture and sale of Rogers’ pouches. In granting Rogers’ motion for summary judgment, U.S. District Judge Dennis Saylor said that the designs of the products were dissimilar, and that Keurig failed to show that the ordinary observer would find the designs to be substantially the same. Among the differences between the designs are that Keurig’s cartridge comes in a plastic cartridge, whereas Rogers’ comes in a pouch. Also, the cartridges differ slightly in shape and size. Thus, while the two cartridges serve the same function, an ordinary observer would not find them to be one and the same.
As the Court found no direct infringement with regard to Keurig’s design patent on its cartridges, Keurig could not argue there was indirect infringement of its apparatus and method patents for its brewers. As a result, Keurig was forced to prove direct infringement of these patents by the users of its brewers. Judge Saylor agreed with Rogers that Keurig no longer has patent rights to its brewers once they’re sold under the doctrine of “patent exhaustion,” which provides that the initial authorized sale of a patented item terminates the patent owner’s exclusive rights to control the use and sale of that item. After the sale of Keurig’s brewers, which the Court found to be a “complete” product, users are free to use whichever manufacturer’s cartridge they choose under the “permissible repair” exception, which prevents a patentee from controlling what is done with a patented article after it is sold. It remains to be seen whether Keurig decides to appeal the decision.