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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`WEBER, INC.,
`Petitioner
`
`v.
`
`PROVISUR TECHNOLOGIES, INC.,
`Patent Owner
`___________________
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`___________________
`
`
`
`PETITIONER’S BRIEF ON REMAND
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`
`TABLE OF CONTENTS
`
`REMAND ISSUE 1: A POSA WOULD HAVE BEEN MOTIVATED
`TO COMBINE THE 904 MANUALS AND LINDEE (ALL CLAIMS). ..... 1
`
`REMAND ISSUE 2: THE COMBINATION RENDERS OBVIOUS A
`DRIVE ROLLER “HAVING A TOOTHED OUTER DIAMETER …
`AND A TOOTHED RECESSED DIAMETER” (CLAIMS 5-7). ................ 3
`
`III. REMAND ISSUE 3: THE COMBINATION RENDERS OBVIOUS
`MOUNTING THE CONVEYOR BELT MOTORS “ON THE SAME
`SIDE” OF THE BELTS (CLAIM 7). ........................................................... 6
`
`
`
`
`
`
`
`
`
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`- i -
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`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`
`
`I.
`
`REMAND ISSUE 1: A POSA WOULD HAVE BEEN MOTIVATED
`TO COMBINE THE 904 MANUALS AND LINDEE (ALL CLAIMS).
`Citation
`Description
`The Federal Circuit found that Weber’s prior-art combination
`Weber, Inc. v.
`
`Provisur
`
`discloses conveyor belt-driven grippers (taught by Lindee)
`
`Techs., Inc.,
`
`“disposed over” the 904 slicer’s feeding apparatus: “We
`
`92 F.4th
`
`therefore hold that the asserted prior art discloses the ‘disposed
`
`1059, 1070
`
`over’ limitation from claim 1 in each challenged patent.”
`
`(Fed. Cir.
`
`2024)
`
`Pet. (Paper
`
`The Petition showed that a POSA would have been motivated to
`
`3), 54-56
`
`use conveyor belts to drive the 904 slicer’s grippers for several
`
`reasons, including because Lindee teaches that “its conveyor
`
`actuation system allows the feed rate of each conveyor belt (and
`
`corresponding gripper) to be different ‘to adjust slice thickness
`
`for one loaf independently of the other,’” thus “provid[ing] the
`
`advantage of allowing for different slice thickness.” (quoting
`
`EX1006, 9:18-21).
`
`Reply (Paper
`
`Provisur did “not dispute [this] key reason to combine” the
`
`29), 9-10;
`
`references and admitted at the oral hearing that it “is not
`
`Oral Hearing
`
`suggesting that there are no benefits to having independently
`
`
`
`- 1 -
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`
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`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`
`Tr. (Paper
`
`driven grippers.”
`
`63), 92:11-13
`
`Reply (Paper
`
`Weber also showed that “using a belt-drive system to drive
`
`29), 10-11
`
`independent grippers” was well-known in the art (citing
`
`EX1006, 9:18-22; EX1012, ¶¶155-156, 161-162; EX1014, 23:1-
`
`10, 24:13-21), and results in “reduced lubrication requirements,”
`
`“improve[d] slicer cleanliness,” and “reduc[ed] ... lubrication
`
`contamination” (citing EX1003, ¶160; EX1062, 129:21-25;
`
`EX1051, ¶¶50-54).
`
`Reply (Paper
`
`Weber likewise showed that Provisur “mischaracterize[d] the
`
`29), 11-15
`
`proposed modification” by suggesting that “a single timing belt
`
`of Lindee [would] driv[e] the three product holder grippers
`
`together as a unit” (quoting POR (Paper 23), 45), when in fact
`
`the combination “allow[s] for different feed rates for each of the
`
`grippers” (citing Pet. (Paper 3), 56 (emphasis in original)).
`
`Reply (Paper
`
`Similarly, Provisur invoked “improper bodily incorporation” of
`
`29), 12-13
`
`the references by suggesting that replacing the 904 slicer’s ball-
`
`screw actuator (which is above the slicer’s grippers) with
`
`Lindee’s conveyor belt (which is below Lindee’s grippers)
`
`would “turn Lindee’s timing belt on its head,” when in fact
`
`
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`- 2 -
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`
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`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`Lindee simply motivates using a conveyor belt to drive the 904
`
`slicer’s grippers.
`
`POR, (Paper
`
`Provisur also argued that “modifying Lindee’s timing belt
`
`23) 44-50;
`
`system to be above the food article path” of the 904 slicer
`
`Reply (Paper
`
`“would have unacceptably increased the risk of food
`
`29), 13-14;
`
`contamination,” but that argument “ignores that the 904
`
`Sur-Reply
`
`Manuals already disclose an upper conveyor system” and that
`
`(Paper 47),
`
`the Federal Circuit’s decision means the belts do not need to be
`
`11-14
`
`directly “above the food article path.”
`
`Sur-Reply
`
`(Paper 47),
`
`14-15
`
`Provisur itself has argued that “[c]learly, no one solution—ball
`
`screw or belt—is superior in all applications.”
`
`II. REMAND ISSUE 2: THE COMBINATION RENDERS OBVIOUS A
`DRIVE ROLLER “HAVING A TOOTHED OUTER DIAMETER …
`AND A TOOTHED RECESSED DIAMETER” (CLAIMS 5-7).
`Citation
`Description
`EX1001,
`Claims 5-7 require each belt to be “wrapped around a drive
`
`12:13-17
`
`roller … having a toothed outer diameter for engaging with
`
`the endless conveyor belt and a toothed recessed diameter for
`
`engaging with a drive belt.”
`
`Reply
`
`Such rollers were well known in the art, as Sandberg
`
`
`
`- 3 -
`
`
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`demonstrates: “drive roller 812 includes a toothed outer
`
`(Paper
`
`29), 31-32
`
`diameter 812a and a toothed, recessed diameter 812b,” and
`
`“[a]n endless drive belt 820 … wraps around the recessed
`
`diameter 812b.” (citing EX1012, ¶156).
`
`Pet.
`
`With that context in mind, the Petition identified Lindee’s
`
`(Paper 3),
`
`drive connector 178 as the claimed roller because it has a
`
`66-67
`
`conveyor drive sprocket 181 (“outer diameter”) for engaging
`
`with a timing belt 334 (“endless conveyor belt”) and a
`
`sprocket 180 (“recessed diameter”) for engaging with a
`
`timing belt 177 (“drive belt”):
`
`
`In response, Provisur advanced a narrow construction of the
`
`POR
`
`(Paper
`
`term “recessed diameter” requiring the overall size of the
`
`23), 58-
`
`roller’s “recessed diameter” to be smaller than the drive
`
`59
`
`roller’s “outer diameter,” which Provisur alleges Lindee fails
`
`to show.
`
`
`
`- 4 -
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`
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`As Weber explained, the “plain understanding” of this claim term is
`
`broader and encompasses sprockets of the same overall size given
`
`Reply
`
`(Paper
`
`29), 30-
`
`that every sprocket contains an outer diameter defined by the tips of
`
`31
`
`its teeth (purple below) and a recessed diameter defined by the
`
`roots (blue below):
`
`Provisur “point[ed] to th[is] same arrangement in its
`
`infringement contentions”:
`
`
`
`Reply
`
`(Paper
`
`29), 30-31
`
`
`Even if the claim term requires that the overall size of the
`
`drive roller’s “recessed diameter” be smaller than its “outer
`
`diameter,” Weber showed that a POSA would have found it
`
`obvious to make one diameter of the prior-art combination’s
`
`Reply
`
`(Paper
`
`29), 31-32
`
`
`
`- 5 -
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`
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`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`drive roller smaller than the other, particularly in view of
`
`Sandberg’s teaching. (citing EX1012, ¶156).
`
`Reply
`
`At the very least, the relative sizes of the toothed diameters
`
`(Paper
`
`“are a simple matter of design choice.” (quoting EX1051,
`
`29), 32
`
`¶¶102-104).
`
`III. REMAND ISSUE 3: THE COMBINATION RENDERS OBVIOUS
`MOUNTING THE CONVEYOR BELT MOTORS “ON THE SAME
`SIDE” OF THE BELTS (CLAIM 7).
`Citation Description
`EX1001,
`Dependent claim 7 also requires that that each conveyor belt
`
`12:21-24
`
`servomotor be “arranged on the same side of the endless conveyor
`
`belts.”
`
`Reply
`
`Weber provided four reasons why a POSA would have arranged the
`
`(Paper
`
`904 slicer’s servomotors this way: (1) “improved maintenance
`
`29), 32-
`
`access” by permitting the operator to “clean and repair both motors
`
`33
`
`in one location”; (2) improved safety by making it easier to shield
`
`the servomotors (and their rotating components) from the user;
`
`(3) such an arrangement is one of only a finite number of
`
`arrangements that would be practical; and (4) such an arrangement
`
`represents a “simple structural rearrangement of parts” and thus is
`
`“an obvious matter of design choice.” (citing Pet. (Paper 3), 76-78;
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`
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`- 6 -
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`
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`
`EX1051, ¶¶111-119).
`
`Reply
`
`In response, Provisur invoked “hindsight bias,” arguing that the
`
`(Paper
`
`maintenance benefits Weber cited derive from the ’812 patent itself,
`
`29), 32-
`
`but, as Weber explained, the patent does not discuss “any
`
`33
`
`maintenance advantages pertaining to locating the motors on the
`
`same side of the conveyor belt.” (citing EX1051, ¶114).
`
`Reply
`
`Even to the extent that there are reasons against making the
`
`(Paper
`
`proposed modification, “[a] POSA routinely balances multiple
`
`29), 33-
`
`factors when making a design choice, and the reasons Weber
`
`34
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`provided outweigh the reasoning Provisur lists because improved
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`maintenance and safety are significant factors in designing a food
`
`slicer,” especially given that the claim “merely recites [a] known
`
`practice.”
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
` /R. Wilson Powers III/
`
`
`R. Wilson Powers III, Reg. No. 63,504
`Counsel for Petitioner
`
`Date: May 20, 2024
`
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`
`- 7 -
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`
`
`Case IPR2020-01557
`U.S. Patent No. 10,639,812 B2
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing PETITIONER’S BRIEF ON REMAND was served electronically via
`
`e-mail on May 20, 2024, in its entirety on the following counsel for Patent Owner:
`
`Michael G. Babbitt (Lead Counsel)
` Sara T. Horton (Back-up Counsel)
` Ren-How H. Harn (Back-up Counsel)
`Tara L. Thieme (Back-up Counsel)
`Henry C. Thomas (Back-up Counsel)
`Mitchell M. Feldhake (Back-up Counsel)
` WILLKIE FARR & GALLAGHER LLP
` MBabbitt@willkie.com
` SHorton@willkie.com
` RHarn@willkie.com
`TThieme@willkie.com
`HThomas@willkie.com
`MFeldhake@willkie.com
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
` /R. Wilson Powers III/
`
`
`R. Wilson Powers III, Reg. No. 63,504
`Counsel for Petitioner
`
`
`
`
`
`Date: May 20, 2024
`
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`22363847
`
`
`
`
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