Southern Visions LLP

Patent Trials and Appeals Board

Mar 31, 2021

IPR2019-01662 (P.T.A.B. Mar. 31, 2021)

Trials@uspto.gov Paper 36
571.272.7822 Date: March 31, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

RED DIAMOND, INC.,
Petitioner,

v.

SOUTHERN VISIONS, LLP,
Patent Owner.
_______________

IPR2019-01662
Patent 9,725,232 B2
_______________

Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting In Part Patent Owner’s Revised Motion to Amend
35 U.S.C. § 318
IPR2019-01662
Patent 9,725,232 B2

2
I. INTRODUCTION
Petitioner, Red Diamond, Inc., filed a Petition for inter partes review
of claims 1, 8, 13, and 17 of U.S. Patent No. 9,725,232 B2 (Ex. 1001, “the
’232 patent”). Paper 1 (“Pet.”). Patent Owner, Southern Visions, LLP, did
not file a Preliminary Response. On April 1, 2020, we instituted trial. Paper
6 (“Inst. Dec.”).
Following institution, Patent Owner did not file a Response. Instead,
Patent Owner filed a Motion to Amend requesting that we cancel claims 1,
8, 13, and 17, unconditionally consider its Motion to Amend, and enter
proposed substitute claims 19–22. Paper 8 (“MTA”) 1. Petitioner filed an
opposition. Paper 11. Pursuant to Patent Owner’s request (MTA 1) we
issued Preliminary Guidance, explaining that Patent Owner had not shown a
reasonable likelihood that it satisfied the statutory and regulatory
requirements associated with a motion to amend, and that Petitioner had
demonstrated a reasonable likelihood that the proposed substitute claims 19–
22 were unpatentable. Paper 13 (“PG”) 3, 8.
Patent Owner subsequently filed a Revised Motion to Amend
requesting “that the Board cancel original claims 1, 8, 13 & 17,
unconditionally consider this Motion, and enter [proposed substitute] claims
23–26.” Paper 14 (Revised MTA) 1. Petitioner filed an Opposition to the
Revised Motion to Amend (Paper 26 (“Opp.”)), Patent Owner filed a Reply
(Paper 30), and Petitioner filed a Sur-reply (Paper 32).
We held an oral argument on January 29, 2021. A copy of the
transcript of that argument was entered into the record. Paper 35 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
Written Decision under 35 U.S.C. § 318(a). For the reasons below, we grant
IPR2019-01662
Patent 9,725,232 B2

3
Patent Owner’s Revised Motion to Amend with respect to Patent Owner’s
request that we cancel original challenged claims 1, 8, 13, and 17, but we
deny Patent Owner’s Revised Motion to Amend with respect to Patent
Owner’s request that we enter proposed substitute claims 23–26.
A. RELATED MATTERS
The parties identify the following related district court matter:
Southern Visions, LLP v. Red Diamond, Inc., No. 2:18-cv-02039-RDP (N.D.
Ala.). Pet. 12–13; Paper 4, 1. The parties also identify PGR2019-00045
involving related U.S. Patent No. 10,071,852, IPR2019-01661 involving
related U.S. Patent No. 9,468,222, IPR2019-01662 involving related US
Patent No. 9,725,232, and IPR2020-00001 involving related US Patent No.
9,549,634. Pet. 12–13; Paper 4, 1. Additionally, Patent Owner identifies
related U.S. Patent No. 10,093,480, U.S. Patent No. 10,130,209, and U.S.
Application No. 16/166,862. Paper 4, 1.
B. THE ’232 PATENT
The ’232 patent, titled “Beverage Brewing Product,” issued on August
8, 2017, and relates to a products for brewing sweetened beverages such as
tea and coffee. Ex. 1001, codes (45), (54), (57). The ’232 patent issued
from U.S. Application 15/375,881 (“the ’881 application”). Ex. 1001, code
(21). The ’881 application is a continuation-in-part of U.S. Application
14/485,878, which is a continuation-in-part of U.S. Application 13/965,498,
which is a continuation-in-part of U.S. Application 13/867,526 (“the ’526
application”). Ex. 1001, code (63).
The ’232 patent states that prior art methods of brewing sweetened
beverages, which include manually adding sugar to a beverage after it brews,
IPR2019-01662
Patent 9,725,232 B2

4
result in “a lack of consistency from one batch of beverages to the next”
because, for example, “one usually does not have a scale to weigh out” the
sweetener, which results in variation of Brix level1 among batches. Ex.
1001, 1:24–46. The ’232 patent aims “to provide an accurate and consistent
way of brewing sweetened beverages.” Ex. 1001, 2:58–60. To that end, the
’232 patent discloses brewing products that “contain[] beverage materials
and sweetener in a prescribed blended ratio.” Ex. 1001, 3:4–8.
The ’232 patent attributes significance to the mesh size and particle
size of the sweetener. For example, the patent discloses that “[i]t has been
found . . . that an advantageous size of particles of sweetener, particularly
sugar, is that retained by US sieve numbers 3–35, although granule sizes
larger than 3 will work as well.” Ex. 1001, 9:23–27; see also Ex. 1001,
4:18–21 (“Preferably, the size of the granulated sugar particles used is in the
range of U.S. mesh sieve nos. 3–35; although, particles the size of U.S. mesh
sieve nos. 3 or larger will work successfully in the present invention.”).
According to the ’232 patent, “[t]he sweetener dissolves rapidly and more
fully . . . when the granular size of the sweetener is generally U.S. Mesh
sieve 35 or larger . . . as opposed to when the granular size of the sweetener
is generally smaller than U.S. Mesh sieve 35.” Ex. 1001, 11:66–12:4.
C. LEVEL OF ORDINARY SKILL IN THE ART
In the Institution Decision, we determined that “a person of ordinary
skill in the art would have had sufficient experience and/or education in the
food industry to possess an understanding of (1) sugar particle size as it

1 “One degree Brix is one gram of sucrose in 100 grams of solution . . . .
Brewed sweetened tea has a typical Brix level of 10½ to 11.” Ex. 1001,
1:35–43.
IPR2019-01662
Patent 9,725,232 B2

5
pertains to brewed beverages, (2) sugar particle size screening, and (3) the
storage and use of sugar in commercial settings.” Inst. Dec. 7. We observed
that this level of ordinary skill is consistent with the level of ordinary skill
that we adopted in a related case that involves similar subject matter. See
Red Diamond, Inc. v. Southern Visions, LLP, PGR2019-00045, Paper 9 at 6–
8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the
level of ordinary skill in the art in the remaining briefing if either party
disagreed with our determination. Inst. Dec. 8.
For purposes of this Final Written Decision, we maintain our
determination from the Institution Decision because neither party disputes
the level of ordinary skill identified in the Institution Decision (see Revised
MTA 12–13), and because we continue to find that the stated level of
ordinary skill is consistent with the record.
II. MOTION TO AMEND
A. ORIGINAL CHALLENGED CLAIMS
As noted above, Patent Owner requests that we “unconditionally
consider” the Revised Motion to Amend and cancel original claims 1, 8, 13,
and 17. Revised MTA 1. Because Patent Owner has not indicated that our
consideration of the Revised Motion to Amend is contingent on a
determination that original challenged claims 1, 8, 13, and 17 are
unpatentable, we grant Patent Owner’s request to cancel original challenged
claims 1, 8, 13, and 17. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”)
(“A request to cancel claims will not be regarded as contingent.”). The
IPR2019-01662
Patent 9,725,232 B2

6
remaining issue before us is whether to grant the Revised Motion to Amend
as to proposed substitute claims 23–26.
B. APPLICABLE LAW
In reviewing a motion to amend, we consider whether the motion
meets the statutory and regulatory requirements set forth in 35 U.S.C.
§ 316(d) (2012) and 37 C.F.R. § 42.121 (2019). See Lectrosonics, Paper 15
at 4. That is, the patent owner must demonstrate the following: (1) the
amendment proposes a reasonable number of substitute claims; (2) the
amendment responds to a ground of unpatentability involved in the trial; (3)
the amendment does not seek to enlarge the scope of the claims of the patent
or introduce new subject matter; and (4) the proposed claims are supported
in the original disclosure of the patent. See 35 U.S.C. § 316(d) (2012); 37
C.F.R. § 42.121 (2019); see also Lectrosonics, Paper 15 at 4–8.
We also consider unpatentability. In that regard, a patent owner “does
not bear the burden of persuasion to demonstrate the patentability of [the
proposed] substitute claims.” Lectrosonics, Paper 15 at 4 (citing Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Bosch Auto. Serv.
Sols. LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)). “Rather, as a result of
the current state of the law and [U.S. Patent and Trademark Office] rules and
guidance, the burden of persuasion ordinarily will lie with the petitioner to
show that any proposed substitute claims are unpatentable by a
preponderance of the evidence.” Lectrosonics, Paper 15 at 4.
C. PROPOSED SUBSTITUTE CLAIMS
Patent owner moves to replace original claims 1, 8, 13, and 17 with
proposed substitute claims 23–26, respectively. Revised MTA 1.
IPR2019-01662
Patent 9,725,232 B2

7
The proposed substitute claims, with underlining indicating language
added to, and strikethrough indicating language removed from, the original
claims, are reproduced below. See Revised MTA, Appendix A (Listing of
Proposed Substitute Claims).
23. A beverage brewing product for producing a
concentrated solution for mixing with a proportioned amount of
water to make a sweetened tea beverage comprising:
at least one water permeable sieve for placement in a
container of a commercial iced tea brewing machine;
a flavored concentrate tea particles and granulated sugar
contained in said at least one water permeable sieve;
wherein said granulated sugar includes particles having a
size in the range of U.S. mesh sieve nos. 3 to 35;
said permeable sieve having openings being generally
smaller than the size of the particles of said concentrate tea
particles and said sugar for the retention of said particles of said
sugar and said concentrate tea particles; and so that said particles
of said sugar are dissolved in said container during steeping in
water and a said concentrated solution is produced to be diluted
with a said proportioned amount of water for making said
sweetened tea beverage; and
wherein said beverage brewing product is capable of
producing said sweetened tea beverage having a Brix value when
said beverage brewing product is steeped in said commercial iced
tea brewing machine using a sugar-to-water ratio of one pound
of sugar per gallon of water dispensed by said commercial iced
tea brewing machine to produce said sweetened tea beverage,
wherein said Brix value is at least 10.5 degrees Brix.

24. The beverage brewing product of claim 1 A beverage
brewing product for producing a concentrated solution for
mixing with a proportioned amount of water to make a sweetened
tea beverage comprising:
IPR2019-01662
Patent 9,725,232 B2

8
at least one water permeable sieve for placement in a
container of a commercial iced tea brewing machine;
tea particles and granulated sugar contained in said at least
one water permeable sieve;
wherein said granulated sugar includes particles having a
size in the range of U.S. mesh sieve nos. 3 to 35;
said permeable sieve having openings being generally
smaller than the size of the particles of said tea particles and said
sugar for the retention of said particles of said sugar and said tea
particles; so that said particles of said sugar are dissolved in said
container during steeping in water and said concentrated solution
is produced to be diluted with said proportioned amount of water
for making said sweetened tea beverage;
wherein said sieve contains a blend ratio of said flavored
concentrate tea particles to said sugar in the range of 1:35 to
1:8025 by weight; and
wherein said beverage brewing product is capable of
dissolving more of said granulated sugar in comparison to the use
of typical grocery store sugar when producing about 3 gallons of
said sweetened tea beverage when steeped in said commercial
iced tea brewing machine.

25. The beverage brewing product of claim 123 wherein
said at least one water permeable sieve contains a blend ratio of
said flavored concentrate tea particles to said sugar granules in
the range of 1:35 to 1:8025 by weight;
wherein said Brix value is no greater than achievable when
using said sugar-to-water ratio and said granulated sugar
contained in said at least one water permeable sieve completely
dissolves.

26. A beverage brewing product for producing a
sweetened tea beverage comprising:
at least one water permeable sieve for placement in a
container of a commercial tea brewing machine;
IPR2019-01662
Patent 9,725,232 B2

9
beverage material tea particles and granulated sugar
contained in said at least one water permeable sieve;
wherein said granulated sugar includes particles having a
size in the range of U.S. mesh sieve nos. 3 to 35;
said permeable sieve having openings being generally
smaller than the size of the particles of said beverage material tea
particles and said sugar for the retention of said particles of said
sugar and said beverage material tea particles; and so that said
particles of said sugar are dissolved in said container during
steeping in water and said sugar sweetened tea beverage is
produced; and
wherein said beverage brewing product contains enough
of said particles having a size in the range of U.S. mesh sieve
nos. 3 to 35 to achieve the result that more of said granulated
sugar dissolves in comparison to the use of typical grocery store
sugar when steeped in said commercial tea brewing machine
using a ratio of one pound of said granulated sugar for each
gallon of said sweetened tea beverage.

D. STATUTORY AND REGULATORY REQUIREMENTS
Petitioner contends the proposed substitute claims fail to meet the
statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and
37 C.F.R. § 42.121. Opp. 1. Among other things, Petitioner argues
proposed substitute claims 23 and 25 introduce new matter in violation of
35 U.S.C. § 316(d)(3). Opp. 1; see 37 C.F.R. § 42.121(a)(2)(ii).
“[T]he Board requires that a motion to amend set forth written
description support in the originally filed disclosure of the subject patent for
each proposed substitute claim, and also set forth support in an earlier filed
disclosure for each claim for which benefit of the filing date of the earlier
filed disclosure is sought.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R.
§§ 42.121(b)(1) and (2)).
IPR2019-01662
Patent 9,725,232 B2

10
Proposed substitute claim 23 includes the following new limitation:
wherein said beverage brewing product is capable of
producing said sweetened tea beverage having a Brix value when
said beverage brewing product is steeped in said commercial iced
tea brewing machine using a sugar-to-water ratio of one pound
of sugar per gallon of water dispensed by said commercial iced
tea brewing machine to produce said sweetened tea beverage,
wherein said Brix value is at least 10.5 degrees Brix.
Revised MTA, Appendix A at 1. Proposed substitute Claim 25 depends
from claim 23, and thus also includes this limitation.
Patent Owner refers to this new limitation of proposed substitute
claims 23 and 25 as the “functional limitation” and cites to paragraphs 3–5,
7–9, 11, 16, 17, 35, 51, 56, 57, and 61 of the ’881 application (Ex. 2063) and
paragraphs 2, 3, 6–10, 23, 25, 27, 28, and 31 of the ’526 application (Ex.
2025) for written description support. Revised MTA 2. In particular, Patent
Owner contends the applications disclose the following:
(1) placing a mesh bag containing tea and large sugar in a basket of a
commercial iced tea brewing (ITB) machine, starting the brewing
cycle, and producing sweet tea in the machine’s urn (Revised
MTA 4 (citing Ex. 2025 ¶¶ 2, 3, 9, 10, 24, 25, 27, 31, cl. 1;
Ex. 2063 ¶¶ 4, 5, 11, 12, 16, 17, 26, 51, 61, cl. 1));

(2) commercial ITB machines have urns capable of holding at least
three gallons of tea (Revised MTA 4 (citing Ex. 2025 ¶ 3;
Ex. 2063 ¶ 4));

(3) sweet tea is “typically” at least 10.5 degrees Brix (Revised MTA 4
(citing Ex. 2025 ¶ 2; Ex. 2063 ¶ 3));

(4) tea is typically sweetened with one pound of sugar per gallon of
liquid (Revised MTA 4–5 (citing Ex. 2025 ¶¶ 2, 3; Ex. 2063 ¶¶ 3,
4));

IPR2019-01662
Patent 9,725,232 B2

11
(5) the U.S. mesh nos. 3–35 range is a preferred range (Revised MTA
5 (citing Ex. 2025 ¶ 10; Ex. 2063 ¶¶ 16, 26, 51, 61));

(6) “The larger sugar granules allow the water to flow around it”
(Revised MTA 6 (quoting Ex. 2025 ¶ 31; Ex. 2063 ¶ 61));

(7) “A concentrated sweetened tea solution flows out of the brewing
basket into the urn . . . for consistently brewing sweet tea”
(Revised MTA 6–7 (quoting Ex. 2025 ¶ 31; Ex. 2063 ¶ 61;
referring to this statement as the “functional result”));

(8) “One degree Brix is one gram of sucrose in 100 grams of solution”
(Revised MTA 6 (citing Ex. 2025 ¶ 2; Ex. 2063 ¶ 3)); and

(9) “Sugar refiners run sugar through a series of sieves rated with a
US mesh number” (Revised MTA 6 (citing Ex. 2025 ¶ 25; Ex.
2063 ¶ 51)).

In addition to these disclosures, Patent Owner argues that a person of
ordinary skill in the art “would be aware of commercially available sugar
around mesh 3–35,” and “would be able to select from commercially
available ‘large’ sugars around mesh 3-35 to achieve the claimed functions.”
Revised MTA 5–6 (citing Falko-Gunter Falkner v. Inglis, 448 F.3d 1357,
1364 (Fed. Cir. 2006)). Patent Owner further argues that the ’881 and ’526
applications “guide creation of a working product because a person of
ordinary skill in the art knows how to determine the size of sugar and knows
how to measure Brix.” Revised MTA 6 (citing Ex parte Johnson, Appeal
No. 2009-006686, at 10 (PTAB Dec. 30, 2009)). Patent Owner also
contends that a person of ordinary skill in the art, “reviewing both
[applications], understands that the structure of larger sugar (increased
granule size or more large granules), results in the function of producing
sweet tea as claimed.” Revised MTA 7.
IPR2019-01662
Patent 9,725,232 B2

12
Petitioner argues that the only discussion of Brix levels in the ’881
and ’526 applications is in the context of prior art, where sweetener is added
after brewing. Opp. 2. According to Petitioner, “[t]here is no mention of
what Brix levels are achievable by using the claimed invention, i.e., a blend
of tea and sugar, together, steeped in at least one sieve having sugar where
one or more sugar particles is between the size[s] of 3 - 35 mesh.” Opp. 2
(emphasis omitted).
Petitioner contends that the language “capable of producing a Brix
level of at least 10.5 degrees Brix” is a “purely functional recital of a broad
genus without giving any supporting structure in the specification of how to
accomplish that function.” Opp. 2–3 (citing Ariad Pharmaceuticals, Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010)). Petitioner asserts
that “Patent Owner is attempting to claim a genus of any product that
includes one or more sugar particles having a size in the range of U.S. mesh
sieve nos. 3–35 that is ‘capable of’ producing the claimed Brix value,” but
does not disclose a single species that satisfies the requirement. Opp. 3.
Petitioner argues there is no written description support for such broad
claims. Opp. 4. Petitioner also argues that testing conducted by Patent
Owner’s declarant, Mr. Ebersole, shows the claimed minimum of 10.5
degrees Brix is not necessarily present when sweet tea is made with a
product including one or more sugar particles in the range of U.S. mesh
sieve nos. 3–35, as claimed. Opp. 2 (citing Ex. 2076 at Exhibit C, 20–29
(Table 3)).
In reply, Patent Owner argues that the ’526 and ’881 applications
provide written description support for the recited Brix value because the
applications “provide a typical [Brix] range for ‘sweet tea’” and then “go on
IPR2019-01662
Patent 9,725,232 B2

13
to teach and claim that the disclosed invention produces ‘sweet tea.’” Reply
1. Patent Owner also argues that the claimed genus is narrow due to the
amount of sugar and liquid recited in the claims. Reply 2. In particular,
Patent Owner contends that proposed substitute claims 23 and 25 recite a
range between 10.5 and 13 Brix – as 13 is “the empirically observed
maximum Brix (at 1 lb. of sugar per gal.).” Reply 2 (citing Ex. 2076 ¶ 72).
Patent Owner contends this entire range is supported without specific
examples because a person of ordinary skill in the art “knows about . . . and
‘would have been readily able to choose’ working large granule sugar, even
without working examples.” Reply 2–3 (citing Falko-Gunter, 448 F.3d at
1364; Johnson, Appeal No. 2009-006686). Patent Owner argues that
reciting “sugar in the 3–35 range” provides structure for achieving the
claimed result, and, therefore, “Patent Owner does not claim any way of
producing the claimed result – only those ways that use sugar in the 3-35
range.” Reply 3.
The test for sufficiency of written description is whether the
disclosure “clearly allow[s] persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.” Ariad, 598 F.3d at 1351
(quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991)). The disclosure must “reasonably convey[] to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” Id. After considering the parties’ arguments and evidence, we find
that the aforementioned “functional limitation” constitutes new matter and
warrants denial of the Revised Motion to Amend with respect to entry of
proposed substitute claims 23 and 25.
IPR2019-01662
Patent 9,725,232 B2

14
Proposed substitute claims 23 and 25 require a product, having sugar
particles of a size in the range of U.S. mesh sieve nos. 3–35, that is capable
of brewing a sweetened tea beverage having a Brix value of at least 10.5
degrees using a ratio of one pound of sugar per gallon of water. Revised
MTA, Appendix A at 1, 3. Patent Owner contends the requirement of a Brix
value of at least 10.5 degrees is adequately supported because the
applications disclose that sweet tea “typically” has a Brix value of 10.5–11,
and the claimed products produce sweet tea. Revised MTA 4–5. The
discussion of the typical Brix of sweetened tea appears in a paragraph under
the heading “Background of the Invention,” and refers to the Brix value of
tea made using the conventional tea brewing method involving steeping tea
in the brewing basket of a commercial tea brewing machine, passing the
concentrated tea solution into the urn, adding cold water to the urn to mix
with the concentrated solution, and then adding sugar to the tea. Ex. 2025
¶¶ 2–3; Ex. 2063 ¶¶ 3–4.
Distinguishing its invention over conventional tea brewing
procedures, Patent Owner contends the disclosed invention produces “sweet
tea” having a Brix value of at least 10.5 degrees by providing sugar in the
brewing basket with the tea, instead of adding sugar to the urn. Revised
MTA 4 (citing Ex. 2025 ¶¶ 2, 3, 9, 10, 24, 25, 27, 31, cl. 1; Ex. 2063 ¶¶ 4, 5,
11, 12, 16, 17, 26, 51, 61, cl. 1). It is undisputed, however, that neither the
’881 application nor the ’526 application provide any examples of producing
a tea having the required Brix by adding sugar particles in the claimed size
range to the tea in the brewing basket of a commercial ITB machine. See
Revised MTA 3–4; Opp. 2–3; Reply 2; Sur-reply 2.
IPR2019-01662
Patent 9,725,232 B2

15
Notably, testing by Patent Owner’s Declarant, Mr. Ebersole, shows
the claimed minimum Brix value of 10.5 degrees is not necessarily achieved
simply by combining sugar, having particles of a size in the range of U.S.
mesh sieve nos. 3–35, with tea in the brewing basket. Ex. 2076 at Exhibit C,
20–29 (Table 3). Rather, Mr. Ebersole’s testing shows that only certain
sugar sizes produced tea having a Brix value of at least 10.5 degrees. Sur-
Reply 1–2; Ex. 2076 at Exhibit C, 20–29 (Table 3)). These specific sizes are
not identified or otherwise disclosed in the ’881 or ’526 applications. See
Sur-reply 1–2.
Additionally, Patent Owner acknowledges that “sweetened tea” can
have a Brix as low as 5 or 6 degrees. Reply 2 (stating that proposed
substitute claims 24 and 26, which are directed to a “sweetened tea
beverage,” “lower the bottom of the range” of the Brix value to “about 5–
6°”). Similarly, Mr. Adam Stewart, one of the named inventors listed on the
’232 patent, testified that “a Brix of at least 8.0 [degrees] qualifies as ‘sweet
tea.’” Ex. 2028 ¶ 69. This evidence undermines Patent Owner’s contention
that that the inventors possessed the claimed subject matter – a product
capable of producing a sweetened tea beverage with a Brix value of at least
10.5 degrees – based on the disclosure that the claimed invention produces
sweet tea. Instead, the evidence suggests Patent Owner disclosed the
“desired result” of matching the prior art in the ’881 and ’526 applications,
but did not “reasonably convey[] to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1349, 1351.
We disagree with Patent Owner’s argument that “even with functional
claims, the ultimate question is whether a [person of ordinary skill in the art]
IPR2019-01662
Patent 9,725,232 B2

16
‘could derive the claim[s] . . . from the parent’s disclosure.’” Revised MTA
3 (quoting Union Oil Co. of Cal. v. A. Richfield Co., 208 F.3d 989, 1001
(Fed. Cir. 2000)). Patent Owner relies on a truncated quote from Union Oil,
making the holding appear to have broader applicability than it does when
considered in its entirety. The sentence in Union Oil Patent Owner quotes
appears in the portion of the decision discussing written description in the
context of whether the narrow range disclosed in a claim must correspond
exactly to those disclosed in the parent application. Id. Answering that
question, the Federal Circuit stated that “the issue is whether one of skill in
the art could derive the claimed ranges from the parent’s disclosure.” Id.
(emphasis added). The Federal Circuit also compared the facts in Union Oil
to those in Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575,
(Fed. Cir. 1985), another case involving claims directed to “ranges and
combinations.” Union Oil, 208 F.3d at 1001. We discern nothing in Union
Oil or in Ralston Purina indicating that the claims involved functional
limitations, and note the Federal Circuit’s statement that “[b]ecause of the
fact-sensitive nature of the written description inquiry, this court has often
warned against misapplication of precedents in this area.” Id. (citing Vas–
Cath, 935 F.2d at 1562).
Patent Owner also argues that “[w]ritten description may be found by
combining patent disclosures with known art, with a disclosed function
structure relationship, or with the ability to derive working results based on
known testing procedures.” Revised MTA 4 (citing Falko-Gunter, 448 F.3d
at 1366; Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir.
2002); Johnson, Appeal No. 2009-006686, at 10–11; Ex parte Adler, Appeal
No. 2006-00157 (PTAB Mar. 23, 2006)). Patent Owner argues the facts in
IPR2019-01662
Patent 9,725,232 B2

17
the present proceeding are similar to those in Falko-Gunter because a person
of ordinary skill in the art would have been aware of “commercially
available sugar around mesh 3–35,” and would have been able to select from
these sugars to achieve the claimed function. Revised MTA 5–6.
We disagree that the facts here are analogous to those in Falko-
Gunter. The claim in Falko-Gunter recited “[a] vaccine comprising . . . a
defective poxvirus that lacks a function imparted by an essential region of its
parental poxvirus . . . .” Falko-Gunter, 559 F.3d at 1360. The Federal
Circuit held the claim was adequately supported because the specification of
the patent at issue disclosed that the invention could be used with any virus
where essential genes can be identified and there was evidence in the record
(in the form of published articles) that essential genes in poxvirus were
known in the art. Id. at 1365–66. Thus in Falko-Gunter, the Federal Circuit
relied on a discussion in the specification of the narrowing feature tied to the
“functional” aspect of the claims, and knowledge in the art of this narrowing
feature. Id. Here, unlike the situation in Falko-Gunter, there is no
discussion of the narrowing feature (the specific size of the sugar particles
within U.S. mesh sieve nos. 3–35 capable of achieving the recited Brix
value) of the functional limitation in the ’881 or ’526 applications. Nor is
there any indication that the narrowing feature tied to the functional
limitation was known in the art. To the contrary, Patent Owner contends the
use of larger sugar to achieve the claimed invention was an unexpected
result. Revised MTA 22–24.
Drawing a comparison to Johnson, Patent Owner contends that the
written description requirement is met because the ’881 and ’526
applications “guide creation of a working product . . . and how to test.”
IPR2019-01662
Patent 9,725,232 B2

18
Revised MTA 6. The disputed claim in Johnson recited a composition with
four components and a pH greater than about 7. Johnson, Appeal No. 2009-
006686, at 2. The specification of the patent in Johnson included examples
having all of the recited components, but did not disclose the pH of the
exemplary compositions. Id. at 4–5. The specification did, however,
indicate that pH adjusting agents could be used to achieve the claimed pH,
and “provide[d] guidance as to what components could be incorporated into
the composition to achieve the claimed” pH value. Id. at 11. Based on these
disclosures, the Board determined the written description requirement was
satisfied. Id. In particular, the Board concluded the specification not only
described how a person of ordinary skill in the art could determine whether
the claimed properties were met, but also that it “provid[ed] guidance as to
what components could be incorporated into the composition to achieve the
claimed properties.” Id.
Johnson, however, is distinguishable because there was specific
guidance in the specification regarding what agents could be used to achieve
the claimed pH value. Johnson, Appeal No. 2009-006686, at 4–5. Here,
there is no guidance regarding what specific sugar particles within the range
of U.S. mesh sieve nos. 3–35 can be used to achieve the claimed Brix value.
Thus, the fact that a person can measure particle size and Brix alone is not
enough for written description support of the claimed functional limitations.
Furthermore, Johnson, a routine decision by another panel of the Board, is
not precedential, and we are not bound by it. For all of these reasons, Patent
Owner’s reliance on Johnson is also unavailing. Revised MTA 6.
Patent Owner also points to the disclosure of the functional result in
the Specification, namely “[a] concentrated sweetened tea solution flows out
IPR2019-01662
Patent 9,725,232 B2

19
of the brewing basket into the urn . . . for consistently brewing sweet tea,”
arguing that written description may be satisfied through the disclosure of
function and minimal structure. Revised MTA 6–7 (quoting MPEP § 2163
(II)(A)(3)(a); Enzo, 323 F.3d at 964). In Enzo, the Court stated that the
written description requirement may be met if the functional characteristic
recited in the claim was “coupled with a disclosed correlation between that
function and a structure that is sufficiently known or disclosed.” Enzo, 323
F.3d at 964. Here, the functional characteristic recited in the claim is
producing sweet tea having a Brix of at least 10.5 degrees. Patent Owner
has not directed us to “a disclosed correlation between that function and a
structure that is sufficiently known or disclosed.” Id. Instead, Patent Owner
has simply directed us to a very general function, producing “sweet tea”
(which includes tea as low as 5 degrees Brix), and a correlation between
producing sweet tea and the use of larger sugar in general. We thus disagree
that a person of ordinary skill in the art “reviewing both [applications],
understands that the structure of larger sugar (increased granule size or more
large granules), results in the function of producing sweet tea as claimed.”
Revised MTA 7 (bold and underlining emphasis added).
We recognize, as Patent Owner points out, that working examples are
not always required to satisfy the written description requirement. Revised
MTA 3; Ariad, 598 F.3d at 1351; Falko-Gunter, 448 F.3d at 1366. We also
recognize that “[i]n making his claim the inventor is at liberty to choose his
own form of expression . . . .” Cont’l Paper Bag Co. v. E. Paper Bag
Co., 210 U.S. 405, 419 (1908). Here, Patent Owner chose to use functional
language in proposed substitute claims 23 and 25. Addressing functional
claim language, the Federal Circuit in Ariad stated:
IPR2019-01662
Patent 9,725,232 B2

20
a generic claim may define the boundaries of a vast genus of
chemical compounds, and yet the question may still remain
whether the specification, including original claim language,
demonstrates that the applicant has invented species sufficient to
support a claim to a genus. The problem is especially acute with
genus claims that use functional language to define the
boundaries of a claimed genus. In such a case, the functional
claim may simply claim a desired result, and may do so without
describing species that achieve that result. But the specification
must demonstrate that the applicant has made a generic invention
that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus.
Ariad, 598 F. 3d at 1349.
Structurally, Patent Owner has claimed a broad genus of brewing
products – any product that includes sugar having particles in the range of
U.S. mesh size nos. 3–35. Patent Owner attempts to further distinguish the
genus by including the functional limitation of requiring the product to be
capable of producing a tea with a Brix level of at least 10.5 degrees. Patent
Owner does not dispute that there are products falling within the structural
limitations that do not satisfy the functional limitations. Indeed, there is
undisputed testing evidence on the record demonstrating that the entire range
of recited structures does not perform the recited function. See Ex. 2076 at
Exhibit C, 20–29 (Table 3); Revised MTA 8 (Patent Owner arguing the
claims only cover products that include particles within the claimed range
that perform the recited function).
Here, we discern no evidence on this record of “a representative
number of species falling within the scope of the genus or structural features
common to the members of the genus so that one of skill in the art can
‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at
IPR2019-01662
Patent 9,725,232 B2

21
1350. Nor do we discern “a precise definition, such as by structure, formula,
chemical name, physical properties, or other properties, of species falling
within the genus sufficient to distinguish the genus from other materials” in
the disclosures, or evidence that “the art has established a correlation
between structure and function.” Id. Instead, we view Patent Owner’s
proposed substitute claims to involve “merely drawing a fence around the
outer limits of a purported genus,” which “is not an adequate substitute for
describing a variety of materials constituting the genus and showing that one
has invented a genus and not just a species.” Id.
We recognize that the subject matter here is different from, and less
complex than, the chemical and biochemical subject matter in Ariad.
Nevertheless, the written description requirement still requires sufficient
description to convey to one of skill in the relevant art that the inventors
“had possession of the claimed invention” and “showing that the applicant
has invented species sufficient to support a claim to the functionally-defined
genus.” Id. at 1351, 1356. Thus we consider the difference in technology
in determining “the level of detail required to satisfy the written description
requirement,” but do not consider the difference in technology to eliminate
entirely the need for some disclosure in the specification indicating
possession of the claimed invention. Id. at 1351.
Patent Owner has not directed us to any portion of the ’526 or ’881
applications showing actual Brix levels achieved by the inventors. Ariad,
598 F.3d at 1352 (“[I]t is the specification itself that must demonstrate
possession.”). Based on Patent Owner’s own arguments, sweetened tea can
have Brix levels as low as 5–6 degrees. Reply 2. Additionally, undisputed
test data shows that not all sugar having particles within the claimed size
IPR2019-01662
Patent 9,725,232 B2

22
range of U.S. mesh sieve nos. 3–35 is capable of providing a tea having a
Brix of at least 10.5 degrees. Ex. 2076 at Exhibit C, 20–29 (Table 3). In
view of the lack of disclosure of the structural features (i.e., sugar granule
particle size) of products capable of producing tea having a Brix of at least
10.5 degrees when included in the brewing basket, we do not discern
evidence demonstrating a person of ordinary skill in the art would have
understood that the inventors had possession of a brewing product meeting
the structural limitations that provided a sweetened tea having a Brix of at
least 10.5 degrees as claimed.
In view of the foregoing, we find that the functional limitation in
proposed substitute claims 23 and 25 constitutes new matter. Because each
of proposed substitute claims 23 and 25 introduces new matter, we must
deny Patent Owner’s Revised Motion to Amend with respect to Patent
Owner’s request that we enter claims 23 and 25 as substitutes for cancelled
claims 1 and 13. See 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).
E. CHALLENGES TO PATENTABILITY
Petitioner contends proposed substitute claims 24 and 26 are
indefinite, and, therefore, unpatentable under 35 U.S.C. § 112(b).
Proposed substitute claim 24 recites a beverage brewing product
comprising a water permeable sieve containing tea particles and sugar
granules, wherein the sugar granules include particles having a size in the
range of U.S. mesh sieve nos. 3–35 and “wherein said beverage brewing
product is capable of dissolving more of said granulated sugar in comparison
to the use of typical grocery store sugar.” Revised MTA, Appendix A at 2.
Proposed substitute claim 26 similarly requires a beverage brewing product
that “contains enough of said particles having a size in the range of U.S.
IPR2019-01662
Patent 9,725,232 B2

23
mesh sieve nos. 3 to 35 to achieve the result that more of said granulated
sugar dissolves in comparison to the use of typical grocery store sugar.”
Revised MTA, Appendix A at 4.
Petitioner argues that these proposed substitute claims are indefinite
because “typical grocery store sugar” has at least three possible meanings.
Petitioner first directs us to the Specification, which states: “Typically, the
sugar found in grocery stores and restaurants are of a small particle and are
retained in a mesh sieve the size of 45-120.” Opp. 8 (quoting Ex. 1001, 5:5–
10). Petitioner contends a second interpretation could be “any granular
sugar product typically sold in grocery stores,” including extra fine
granulated (“EFG”) sugar, Sugar in the Raw, and confectioner’s sugar. Opp.
8–9. Finally, Petitioner contends the term may refer to EFG sugar because it
is the largest volume of sugar sold in the grocery store. Opp. 9. Petitioner
asserts, however, that this interpretation is “divorced from anything in the
specifications – EFG sugar is never mentioned.” Opp. 9. Petitioner also
argues that testing by Mr. Coffield shows the grain size distribution in EFG
sugar can vary widely. Opp. 9 (citing Ex. 1004, at pages 51–53 (Exhibit B)).
According to Petitioner, “even if this third interpretation were to be applied,
a [person of ordinary skill in the art] would still be left without any informed
choice as to which EFG sugars are ‘typical’ and which are not.” Opp. 9.
Further, Petitioner contends that “[i]nstead of using a numerical standard or
some other well-defined parameter, the Patent Owner has chosen to use an
intentionally ambiguous term requiring the public to risk infringement by
guessing the definition of ‘grocery store sugar’ and also what is ‘typical’ for
such sugar.” Opp. 9.
IPR2019-01662
Patent 9,725,232 B2

24
Patent Owner argues EFG is synonymous with “typical grocery store
sugar,” and even if there are some differences between various EFG sugars,
there is a standard specification and a “typical” analysis. Reply 4 (citing
Ex. 2062, Ex. D; Ex. 2003, 242). According to Patent Owner, “not only does
a [person of ordinary skill in the art] know what is typical EFG, a [person of
ordinary skill in the art] can buy EFG, ensure that it is on spec, and perform
brew tests with it in order to determine the scope of the claims.” Reply 4.
After considering the evidence of record, we find that proposed
substitute claims 24 and 26 are indefinite. We agree with Patent Owner that
a person of ordinary skill in the art would understand “typical grocery store
sugar” to refer to EFG sugar, as the evidence of record supports such a
finding. For example, Petitioner’s declarant, Mr. Coffield, testified that EFG
is synonymous with grocery store sugar. Ex. 2029, 228:13–229:13.
It is undisputed that EFG sugar contains a distribution of particle sizes
ranging from 20–100 mesh, including some particles within the range of 3–
35 mesh as recited in the proposed substitute claims. Ex. 2062, Ex. D;
Ex. 2003, 42; Ex. 1004, at pages 51–53 (Exhibit B). Evidence presented by
Petitioner, however, suggests that the number of particles in EFG sugar
falling in the range of U.S. mesh sieve nos. 3–35 can vary based on the
brand of sugar. In particular, Petitioner’s declarant, Mr. Coffield, tested
several different brands of EFG sugar, and reported that the number of
particles within 3–35 mesh varies from approximately 24% (Domino brand

2 Patent Owner cites to page 24, but we believe the correct citation is to page
42, as Patent Owner did not include page 24 of the Sucrose Guide as part of
Exhibit 2003 and the chart Patent Owner refers to appears on page 42.
IPR2019-01662
Patent 9,725,232 B2

25
sugar) to 47% (Publix brand sugar). Ex. 1004, at pages 51–53; Opp. 9.
Patent Owner does not contest Mr. Coffield’s test results.
Instead, Patent Owner asserts there is a “standard” specification for
EFG sugar. Reply 4. Patent Owner’s standard, however, is a corporate
product specification for the ASR Group, which operates under the Domino
Sugar brand. Ex. 2062 ¶ 7, Ex. D. There is insufficient evidence on this
record that the corporate product specification for the ASR group is a
“standard” for all EFG sugar, regardless of brand.
Patent Owner also contends there is a “typical” analysis for EFG,
which indicates that between 2–25% of the particles in EFG sugar can have
a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the
“Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree
with Patent Owner that this shows a typical analysis for EFG sugar, it still
presents a variance of up to 20% for particles having a size in the range of
U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record
suggests that the particle size distribution for EFG sugar, including the
number of particles falling in the range of U.S. mesh sieve nos. 3–35, can
vary among different EFG sugars. Thus, the term “typical grocery store
sugar,” “might mean several different things” in terms of the number of its
particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no
informed and confident choice is available among the contending
definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed.
Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800
F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 7–10; Reply 4.
Proposed substitute claims 24 and 26 compare the dissolution of the
claimed beverage brewing product against the dissolution of a product using
IPR2019-01662
Patent 9,725,232 B2

26
typical grocery store sugar (i.e., EFG). Patent Owner explains that the size
of the particles affects dissolution – namely that larger sugar is more
advantageous – in the claimed invention. See, e.g., Revised MTA 5;
Ex. 1001, 9:23–27, 10:19–22. This suggests that an EFG sugar product
having a greater percentage of large particles will be capable of dissolving
“more of granulated sugar” as compared to an EFG sugar product having a
lower percentage of large particles. As a result, using the dissolution
properties of “typical grocery store sugar” as a comparator in the claims is
problematic as there is a potential for inconsistent results based on which
particular EFG sugar product is used. The potential for inconsistent results
undermines Patent Owner’s argument that these claims satisfy the
definiteness requirement because a person of ordinary skill in the art “can
buy EFG . . . and perform brew tests with it in order to determine the scope
of the claims.” Reply 4.
Particle size is a critical factor for proposed substitute claims 24 and
26, which require a comparison of dissolution properties of the sugar used in
the recited brewing product and typical grocery store sugar. Patent Owner
contends “[t]here is an ‘informed and confident’ choice for ‘typical grocery
store sugar’ - EFG sugar.” Reply 4. The evidence of record, however,
shows the number of large particles (3–35 mesh) varies among EFG sugars.
Ex. 2003, 42; Ex. 1004, at pages 51–53. In view of this, we find a person of
ordinary skill in the art would not have understood “typical grocery store
sugar” identifies sugar having particles of a particular size with sufficient
specificity to allow the comparisons that proposed substitute claims 24 and
26 require. Accordingly, proposed substitute claims 24 and 26 are indefinite
because they “fail[ ] to inform, with reasonable certainty, those skilled in the
IPR2019-01662
Patent 9,725,232 B2

27
art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach
to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings
(Jan. 6, 2021); MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020).
III. CONCLUSION
Patent Owner’s request to cancel original claims 1, 8, 13, and 17 is
granted. Patent Owner’s request to enter proposed substitute claims 23–26
is denied.
The table below summarizes our conclusions as to Patent Owner’s
Revised Motion to Amend the claims:
Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 1, 8, 13, 17
Substitute Claims Proposed in the Amendment 23–26
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 23–26
Substitute Claims: Not Reached
IV. ORDER
It is hereby:
ORDERED that Patent Owner’s Revised Motion to Amend is granted
with respect to Patent Owner’s request to cancel claims 1, 8, 13, and 17 of
the ’232 patent;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend is denied with respect to Patent Owner’s request to enter proposed
substitute claims 23–26;
FURTHER ORDERED that parties to this proceeding seeking judicial
review of our decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
IPR2019-01662
Patent 9,725,232 B2

28
For PETITIONER:
Jamaica Potts Szeliga
Seyfarth Shaw, LLP
jszeliga@seyfarth.com

James M. Robertson
J.M. Robertson, LLC
jrobertson@jmrpatents.com

Marcus R. Chatterton
Balch & Bingham, LLP
mchatterton@balch.com

For PATENT OWNER:

Raymond G. Areaux
J. Matthew Miller III
Carver, Darden, Koretsky, Tessier, Finn,
Blossman & Areaux L.L.C.
areaux@carverdarden.com
miller@carverdarden.com