Trials@uspto.gov
`$71-272-7822
`
`Paper9
`Date: March 23, 2021
`
`PUBLIC VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEBER,INC.,
`Petitioner,
`
`V.
`
`PROVISUR TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2020-01557
`Patent 10,639,812 B2
`
`Before MITCHELL G. WEATHERLY, TIMOTHY J. GOODSON,and
`JON M. JURGOVAN,Administrative Patent Judges.
`
`JURGOVAN,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

`

`IPR2020-01557
`Patent 10,639,812 B2
`
`1.
`
`INTRODUCTION
`
`A. Background
`Weber, Inc.(“Petitioner’’) filed a Petition (Paper 3, “Pet.”) requesting
`
`inter partes review of claims 1-11 of U.S. Patent No. 10,639,812 B2
`(Ex. 1001, the “’812 patent”). Provisur Technologies,Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).'
`
`Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), the Board has
`
`authority to determine whether to institute inter partes review. Inter partes
`
`review maynotbeinstituted unless “there is a reasonablelikelihoodthat the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we
`
`grant institution of inter partes review of the ’812 patent.
`
`B. Real Parties in Interest
`
`Petitioner identifies the following entities as real parties in interest:
`
`Textor, Inc.; Weber Maschinenbau GmbH Breidenbach; Weber
`
`Maschinenbau GmbH Neubrandenburg; and Textor Maschinenbau GmbH.
`
`Pet. 86. Patent Owneridentifies Provisur Technologies, Inc. as the sole real
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`party in interest. Paper5, 1.
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`C. Related Matters
`
`Theparties list as related matters Provisur Technologies, Inc. v.
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`Weber, Inc. et al, Case No. 5-20-cv-06069 (MOWD)); and IPR2020-01556,
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`which challenges U.S. Patent No. 10,625,436 B2, and which,like the ’812
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`patent, is a division of U.S. Application No. 13/099,325. Paper 5, 1; Pet. 86.
`
`! Patent Owneralso submitted a redacted version of its Preliminary
`Response in Paper7.
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`IPR2020-01557
`Patent 10,639,812 B2
`D. The ’812 Patent
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`The ’812 patentis titled “High Speed Slicing Machine.” Ex. 1001,
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`code (54). The slicing machinehasa slicing station; a moveable frame
`
`supporting a food article feed mechanism frame; and a foodarticle gate.
`
`Ex. 1001, code (57). Foodarticles are loaded ontoalift tray which raises to
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`a staging position where foodarticles contact the food article gate in line
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`with the feed paths of the food articles. Jd. Foodarticle grippers, driven
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`individually along the feed paths, move foodarticles toward the slicing
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`station. Id. The foodarticle gate assists in removal of end portions of food
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`articles. Id.
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`Figure 1B of the ’812 patent is shown below.
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`The ’812 patent’s Figure 1B showslift tray assembly 220
`in a staging position for loading foodarticles.
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`Figure 1B depicts slicing machine 100. Lift tray assembly 220 is in a
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`staging position to allow foodarticles to be loaded therein in multiple lanes.
`_Id. at 9:13-10:4, Fig. 1. Lift tray assembly 220 then elevates from the
`staging position to an elevated position that aligns food products with a
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`slicing blade ofslicing head apparatus 124, as shown below in Figure 1. Jd.
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`at 9:28-34.
`
`
`
`\_ 2S
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`OSSaon cea ee
`=e)ler
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`
`Pec)tay|an
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`The ’812 patent’s Figure 1 illustrates a side view ofslicing apparatus 100
`with lift tray assembly 220 in its elevated position
`to feed foodarticles into a slicing blade.
`
`140
`
`Figure 1, above, showsthat slicing apparatus 100 includes base section 104
`with collapsible frame 105, and an automatic foodarticle loading
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`apparatus 108 that receives food articles 110 to be sliced. Jd. at 4:33-S0.
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`Slicing apparatus 100 further includes foodarticle feed apparatus 120, food
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`article end and scrap removal conveyor 122, slicing head apparatus 124, and
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`slice receiving conveyor 130. Id.
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`Patent 10,639,812 B2
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`Figures 13A to 13D of the ’812 patent are shown below.
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`Figures 13A to 13D ofthe 812 patent depict stages of operation of
`the ’812 Patent’s loaf feed apparatus. Jd. at 4:7—15.
`
`In Figure 13A,the lift tray assembly 220 is elevated into position. Food
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`article gate 2020 blocks foodarticle 110 initially from advancing to the
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`slicing station. Jd. at 10:8—-9. In Figure 13B,article gate 2020 lowers and
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`acts as a floor for food article 110 while gripper 394 grips the food product
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`and is driven by a drive belt to feed it into the slicing blade. Jd. at 6:31-7:8;
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`10:9-10. In Figure 13C,article gate 2020 further lowers and gripper 394
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`releases the remainder end of foodarticle 110 so that it drops past article
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`Patent 10,639,812 B2
`gate 2020 onto baffle 2022 to scrap removal conveyor 122. Jd. at 10:10-15.
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`In Figure 13D, conveyor 122 conveys the remainderend ofthe foodarticle
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`to discharge chute 2030. Jd. at 10:16—20.
`
`E.
`
`Illustrative Claim
`
`Petitioner challenges claims 1-11, whichare all of the claimsin the
`
`°812 patent. Claim 1 is independent and claims 2-11 depend,directly or
`
`indirectly, from claim 1. Claim 1 is reproduced below, with brackets noting
`
`Petitioner’s identifiers:
`
`[1.p] 1. A food article slicing machine comprising:
`[1.1] a) a slicing station comprising a knife blade and a knife
`blade drive driving the blade along a cutting path in a cutting
`plane;
`
`[1.2] b) a food article loading apparatus;
`[1.3] c) a foodarticle feed apparatus disposed oversaid food
`article loading apparatus,
`[1.4] d) said food article feed apparatus having a conveyor
`assembly with independently driven endless conveyorbelts,
`[1.5] e) wherein each of the conveyorbelts is connected to a
`food article gripper for moving a foodarticle along a food
`article feed path,
`[1.6] f) the conveyor assembly is an upper conveyor assembly,
`[1.7] g) a foodarticle stop gate disposed upstream oftheslicing
`station formsa portion of the food article feed path,
`[1.8] h) wherein the food article loading apparatus includes a
`lift tray assembly moveable betweena staging position and an
`elevated position, said elevated position being a position
`wherein the food articles disposed withinthelift tray assembly
`are in the foodarticle feed path,
`[1.9] i) the food articles are supported in position along the food
`article feed path byat least the food article stop gate when the
`lift tray assembly is moved from its elevated position,
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`Patent 10,639,812 B2
`[1.10] j) wherein the food article stop gate also serves as a door
`for the removal of foodarticle end portions.
`Ex. 1001, 10:56-11:38 (bracketed labels added in correspondence with
`
`Petitioner’s identification of the claim elements for ease of discussion).
`
`F. Asserted Grounds
`
`Petitioner contendsthat the challenged claims would have been
`
`unpatentable based on the following grounds:
`
`
`‘Claims Challenged 35 U.S.C. §?|References/Basis
`
`
`2006 904 manual,’ Lindee,‘
`
`
`
`
`
`
`
`6-7
`1-5, 8-11
`
`103
`
`103
`
`
`
`2006 904 manual, Lindee,
`Sandberg, Mathues®
`
`2010 904 manual,’ Lindee,
`Sandberg
`
`
`
`2010 904 manual, Lindee,
`Sandberg, Mathues
`
`a
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and [03 that became
`effective after the effective filing date of the challenged claims. Therefore,
`weapply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
`3 Operatin Manual: Slicer CCS 904 (English Language Translation) CCS-
`904 _06_2006-07-01_GB / T-07_2005-11-10, by
`Weber Group, 1—2 8
`(Ex. 1005) asserted as prior art under pre-AIA § 102(b). Pet. 28-29.
`* US 5,628,237,
`issued May 13, 1997 (Ex. 1006) asserted as prior art under
`pre-ATA § 102(b). Pet. 29:
`> US 2009/0145272 A],
`filed October 21, 2008 (Ex.1012) asserted as prior
`art under pre-AIA § 102(a) and § 102(e). Pet. 29.
`© US 2008/0016999 Al, published January 24, 2008 (Ex. 1013) asserted as
`prior art under pre-AIA : 102(b). Pet. 29°
`7 Operatin Manualfor theSlicer CCS 904-02 (forproduct lengths to
`
`1200 mm/1600 mm) (English Language Translation), by Weber Group,
`1-259 (Ex. 1009) asserted as prior art under pre-AIA § 102(a). Pet. 29.
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`IPR2020-01557
`Patent 10,639,812 B2
`Pet. 30. In support ofits proposed grounds, Petitioner relies on the
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`Declaration of Richard Hooper, Ph.D. See Ex. 1003; Pet. 2.
`
`Il. LEVEL OF ORDINARYSKILL IN THE ART
`
`Petitioner proposes that a person of ordinary skill in the art would
`
`have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering
`
`(or a similar field) and at least two years of experience working on food
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`processing and/or packaging systems(orin a similar field)” or “(2) at least
`seven years of experience working on food processing and/or packaging
`
`systems(or in a similar field).” Pet. 20 (citing Ex. 1003 {{] 26-27). Patent
`Ownerdoesnot contest Petitioner’s definition or provide its own proposal.
`
`For purposesof this Decision, we adopt Petitioner’s proposal.
`
`Il. CLAIM CONSTRUCTION
`
`“In an inter partes review proceeding,a claim of a patent .
`
`.
`
`. shall be
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`construed using the same claim construction standard that would be used to
`
`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
`
`§ 42.100(b) (2019). That standard “includ[es] construing the claim in
`
`accordance with the ordinary and customary meaning of such claim as
`
`understood by oneofordinary skill in the art and the prosecution history
`
`pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc). Only termsthat are in controversy need to be
`
`construed, and then only to the extent necessary to resolve the controversy.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
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`1017 (Fed. Cir. 2017). On the current record, we discern no termsthat
`
`require express interpretation in order for us to determine whetherto
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`institute inter partes review.
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`IV. CITED PRIOR ART REFERENCES
`
`A. 2006 904 Manual
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`The 2006 904 manualdescribes operations of a food slicer, Weber’s
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`CCS 904 food slicer. Ex. 1005, 3-9. Figure 6 is reproduced below:
`
`—Oo OOOO ae O®
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`Fig. 6
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`Machine overview (for product lengths up to 1200 mm)
`
`Figure6illustrates a slicing machinefor slicing products up to
`1200 mm.
`/d. at 15.
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`In the slicer illustrated in Figure 6, element 3 refers to a blade head housing,
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`which contains a blade head drive, a blade head, and an involute blade. Jd.
`
`at 15-16. Element4 refers to a shear bar and product-section guide where
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`the products are sliced. Jd. Element5 is a product bed conveyorthat
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`supports the guidance andtransport of the productup to the shearbar, and
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`serves as a productlimit stop whentheslicer is loaded andasalast piece
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`ejection flap when the product’s end pieces are ejected from the product
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`holder. Jd. Element 6 is an upper product guide for pressing on the products
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`from aboveto facilitate even transport into the slicing area. /d. Element 7
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`refers to product holders for gripping the products, feeding them into the
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`outlet and preventing them from falling out during slicing. Jd. Element8 is
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`a product conveyorfor feeding the productsinto the slicing area. Id.
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`Element9 is an end piece removal conveyor for moving end piecesof the
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`products out of the slicing area. Jd. Finally, element 10 is a timing belt used
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`by the operator or by a module connected upstream to feed products to the
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`slicer. Jd.
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`Figure 7 is reproduced below:
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`==" DOOB08 DO
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`Fig. 7
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`Machine overview (for product lengths exceeding 1200 mm)
`
`Figure 7 illustrates a slicing machinefor slicing products exceeding
`1200 mm in length. Jd. at 17.
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`Theslicer illustrated in Figure 7 includes elements 1-7, which are similar to
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`elements 1—7 oftheslicer illustrated in Figure 6. In addition,the slicer of
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`Figure 7 includes a blank holder (element 8) that presses the product on to
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`the transport tracks and thus supports an even and safe guidanceofthe
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`product. Jd. at 17-18. Element9 is an end piece ejection flap for guiding
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`the productinto the slicing area and enabling the end piece to be ejected. Jd.
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`Element 10 is a product conveyor for feeding products into the slicing area.
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`Id. Element 11 is an optional end piece removal conveyor for moving out of
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`the slicing area the first slices or the end pieces of the products. Jd.
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`Figures 28 and 29 of the 2006 904 manual, reproducedbelow,
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`illustrate a slicing process and a processof ejecting end pieces. Jd. at 40.
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`Fig. 28=Slicing process
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`Figure 28 illustrates a slicing process for products
`fed to the blade. Jd.
`
`
`
`
`Fig.29
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`Ejecting end pieces
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`Figure 29 illustrates ejection of end product pieces. Jd.
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`The ejection processillustrated in Figure 29 (1) pulls back the end pieces of
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`the products using the product holder,(ii) pivots the product bed conveyor
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`into the ejection position, and(iii) uses the product holderto let the end
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`pieces fall such that (iv) the end pieces fall on to the end piece removal
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`conveyor and are removed. Id.
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`Patent 10,639,812 B2
`B. 2010 904 Manual
`
`The 2010 904 manualdescribes the operations of Weber’s CCS 904-
`
`02 food slicer. Ex. 1009, 1, 3-8. Accordingto Petitioner, the 2010 904
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`manualis “substantively identical”to the 2006 904 manual exceptthatit
`
`describes “an additional, optional feature that enables each of the upper
`conveyors(i.e., the ‘product guide’) to be independently driven by separate
`drive motors.” Pet. 9 (citing Ex. 1009, 266; Ex. 1003 4 45). Because the
`drive motors are the focus of Petitioner’s reliance on the 2010 904 manual,
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`our summary below centers on that feature.
`
`Figure 211 of the 2010 904 manualis reproduced below:
`
`Fig. 211
`
`Product guide
`
`Figure 211 illustrates elements of the CCS 904-02slicer’s drive
`unit. Jd. at 166.
`
`Figure 211 shows support frames (element1), a cylinder holder (element2),
`and a standard drive unit (element3) or an optional drive unit with separate
`
`drives (element 4). Jd. at 166. With the standard drive unit, all tracks of the
`productguide are driven at the same speed bythe drive unit.
`/d. In the
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`Patent 10,639,812 B2
`optionally available version of the slicer with separate drives, all tracks of
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`the product guide can be individually driven with different speeds. Jd.
`
`C. Sufficiency ofPetitioner’s Showing that the 2006 904 Manual and
`2010 904 Manual Qualify as Printed Publications
`
`A threshold, disputed issue is whether Petitioner has made an
`
`adequate showingthat the 2006 904 manual and the 2010 904 manual
`
`qualify as prior art printed publications. See Pet. 20-26; Prelim.
`
`Resp. 20-36.
`
`1. Legal Standards
`
`In determining whether a reference qualifies as a printed publication,
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`“(t]he key inquiry is whetheror not a reference has been made ‘publicly
`
`accessible.”” M&K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376,
`
`1379 (Fed. Cir. 2021) (quoting Jn re Klopfenstein, 380 F.3d 1345, 1350
`
`(Fed. Cir. 2004)). “A reference will be considered publicly accessible ifit
`
`was disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence can locate it.” Medtronic, Inc. v. Barry, 891 F.3d 1368,
`
`1380 (Fed. Cir. 2018) (internal quotation marks and citations omitted). The
`
`Federal Circuit has interpreted the printed publication provision “broadly,
`
`finding that even relatively obscure documents qualify as prior art so long as
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`the relevant public has a meansof accessing them.” GoPro, Inc. v. Contour
`
`IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018) (citing Jazz Pharm.,
`
`Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1354-60 (Fed. Cir. 2018)).
`
`Atthe institution stage, the operative question is whethera petitioner
`has established a reasonablelikelihood that a reference is a printed
`
`publication. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
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`Paper 29, 21 (PTAB Dec. 20, 2019) (precedential). This differs from the
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`standard in a final written decision, at which point “the petitioner bears the
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`burden of establishing by a preponderance of the evidence that a particular
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`documentis a printed publication.” Nobel Biocare Servs. AG v. Instradent
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`USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, 891 F.3d
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`at 1380).
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`2. Summary ofthe Parties’ Contentions Regarding Whether the 904
`Manuals Are Printed Publications
`
`As summarizedabove,Petitioner asserts that the “[t]he 2006 904
`
`manualis an operations manual for the Weber 904 food slicer” and that the
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`2010 904 manual “‘is a later version of the first 904 manual.” Pet. 3, 9.
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`Petitioner presents testimonial evidence to support its assertionsthat the
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`Weber904 food slicer was sold to the general public at least as early as
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`November15, 2007, and that the 2006 904 manual was shipped with each
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`904 slicer sold between November 15, 2007, and May 2009. Jd. at 21 (citing
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`Ex. 1011 §§ 11-12; Ex. 1010 ff 13-20). According to Petitioner, paper and
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`electronic copies of the 2006 904 manual accompanied eachofthe forty-
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`nine 904 slicers delivered to customers during that period, of which eleven
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`were delivered to the United States. Jd. at 22 (citing Ex. 1011 4 16;
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`Ex. 1010 ¥ 16).
`
`Petitioner further asserts that the 2006 904 manual was available to
`
`interested membersof the public upon request. Jd. at 23-24 (citing Ex. 1011
`
`994, 12; Ex. 1010 421). Petitioner contends that the advertising and
`
`magazine articles announcing the release of the 904 slicer madeinterested
`
`membersof the public aware of the 904 slicer and, therefore, the 2006 904
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`manual. /d. at 24 (citing Ex. 1011 § 13).
`
`Petitioner presents similar arguments and evidence to support the
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`public accessibility of the 2010 904 manual. See id. at 25-26. In particular,
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`Petitioner argues that the 2010 904 manual accompanied eachofthefive
`
`904 slicers that were sold between February 15, 2010, and May 2010, and
`
`that the manual wasavailable to the public upon request at least as early as
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`February 10, 2010. Jd. (citing Ex. 1011 ff 19-26; Ex. 1010 J 19-27;
`
`Ex. 1016 4 17).
`
`Patent Ownerchallengesthe sufficiency of Petitioner’s showing on
`
`the public accessibility of the manuals for several reasons—indeed, these
`arguments make up the bulk of the Preliminary Response. See Prelim.
`Resp. 1-2, 8-36. Patent Ownerarguesthat Petitioner’s showingis
`
`insufficient because the 904 manuals had limited customerdistribution
`
`scope,restrictions on copying, andrelated to a prohibitively expensive
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`product. See id. at 20-25. With respect to the 2006 904 manual, Patent
`Ownernotes that Weberprovided invoices for only eleven slicers that were
`
`accompanied by this manual, and those sales were made to only seven
`
`unique customers. Jd. at 10. Patent Owner contends that such a limited
`distribution is not enough to show public accessibility. [d. at 21; see alsoid.
`
`at 26-29.
`
`Further, Patent Owner argues that the manualprohibited unauthorized
`
`copying, and thattheslicer deliveries were subject to Weber’s Terms and
`Conditions, which imposed additionalrestrictions on the copying and
`
`distribution of the manuals. See id. at 11-12, 16. Patent Ownerarguesthat
`
`these restrictions disqualify the manuals from being publicly accessible. See
`
`id. at 30-34. In addition, Patent Ownerhighlights that the selling price for
`the 904 slicer was betweenPY with an average
`sales price ofP| Id. at 12. According to Patent Owner, the high
`price ofthe slicers means that the accompanying manual should not be
`
`considered publicly accessible. Jd. at 34-36.
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`Asto the purported availability of the manual upon request, Patent
`
`Ownerurges that “Weber doesnot provide any testimony or documentation
`
`on what price Weber would have charged to non-customers that requested a
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`copy of the 2006 904 manual, or any example where a non-customer asked
`
`for and received a copy,”noris there “evidence that Weber ever informed
`
`the public of its supposed policy to provide the manual upon request.” Id.
`
`at 13-14.
`
`Similarly, as to the 2010 904 manual, Patent Owner argues that Weber
`
`has identified only three unique customers that received the 2010 904
`
`manual, subject to Weber’s Terms and Conditions, and thelisted prices for
`these deliveries ranged fromSe Prelim.
`Resp. 16-17. And Petitioner has not shown that any non-customer requested
`
`and received the 2010 904 manual pursuant to Weber’s policy to make
`
`manuals available upon request. Jd. at 17.
`
`3. Analysis
`
`Basedon the current record, we determine that Petitioner has
`
`established a reasonable likelihood that the manuals are printed publications.
`
`We emphasize that this determination is based on the record atthis stage of
`the proceeding. Patent Owner’s counterarguments are reasonable and they
`
`maybe persuasive with a complete evidentiary record and under the
`
`preponderance standard applicable at the time ofthe final decision. The
`
`discussion below summarizesouranalysis at this stage and based on the
`
`current record, but the parties are free to develop their arguments further on
`
`these issues.
`
`The most significant factor in our determination that Petitioner’s
`
`showing is adequateis the similarity of this case to In re Enhanced Security
`
`Research, LLC, 739 F.3d 1347 (Fed. Cir. 2014). There, the reference at
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`issue was the manualof a software product called NetStalker. Jd. at 1350.
`
`Onappeal, the patentee challenged the Board’s determination that the
`
`manual qualified as a prior art printed publication. Jd. at 1354. The Federal
`
`Circuit rejected that argument based on the following evidence: an
`
`inscription in the manual, a declaration from the C.E.O. of the companythat
`
`produced NetStalker, and NetStalker advertisements. Jd. at 1354-55.
`
`Specifically, the court noted that the manual contained an inscription dating
`
`it to May 1996, which was when a declarant averred that the manual was
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`madeavailable to the public. The declarant also testified that the manual
`
`was available to interested members of the public upon request and that the
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`NetStalker product “wassold to or installed for approximately a dozen
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`customers.” Jd. The NetStalker advertisements were published in 1995,
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`further corroborating the manual’s public accessibility. The Federal Circuit
`
`held that the inscription, declaration, and advertisements constituted
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`substantial evidence supporting the Board’s finding that the manual was
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`publicly available priorart. Id.
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`Petitioner has provided the same evidence, and more, to support the
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`public availability of the 2006 and 2010 904 manuals. Petitioner provides a
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`declaration from Jérn Schreiber, the author of the manuals,testifying that the
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`manuals were produced and publicly available by November15, 2007, and
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`February 15, 2010, respectively. See Pet. 21-22, 25 (citing Ex. 1010
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`4] 6-13, 19-27). Mr. Schreiber points to inscriptions in the manuals and
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`invoices from translations services to corroborate his testimony regarding
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`creation and distribution of the manuals. Ex. 1010 § 11-13, 19, 25. In
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`addition, Mr. Schreibertestifies that the manuals were available upon
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`request by customersor interested persons, and that the manuals were
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`included in paper andelectronic format with the delivery of each 904slicer
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`purchased. Jd. J] 14,21. Mr. Schreiber states that the 2006 904 manual was
`provided with 49 slicers worldwide before May 2009, and Mr. Schreiber
`provides order anddelivery recordsfor the eleven of those 49slicers that
`were delivered to customers in the United States. Jd. 9] 15-17.
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`Mr. Schreiber also provides the order and delivery records for thefiveslicers
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`that included the 2010 904 manual. Jd. J] 24-26. Petitioner also provides a
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`declaration from Carsten Reisz, an Area Sales Manager for Weber who has
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`been responsible for sales in the United States and Canadasince 2005.
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`Ex. 101193. Mr. Reisz corroborates Mr. Schreiber’s testimony regarding
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`Weber’s practices for translating manuals, making them available upon
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`request, and including them with delivery of machines. Jd. {{ 7-12.
`Additionally, Mr. Reisz provides an excerpt from the August 2008 issue of
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`Meat & Poultry Magazine containing an article and advertisementfor the
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`904 slicer. Jd. § 13. Thus, Petitioner’s showing regarding the manuals
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`includesall the same types of evidence the Federal Circuit found to be
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`sufficient in Enhanced Security.
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`Patent Ownerseeksto distinguish Enhanced Security on the ground
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`that it arose from a reexamination proceeding. See Prelim. Resp. 24—25.
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`Patent Ownerarguesthat in the reexamination context, the burden on
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`showing whether a reference qualifies as a printed publication can shift
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`between an Examinerand an applicant, whereas no such burdenshifting
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`occurs in inter partes reviews. Id. (citing Ex Parte Grillo-Lopez, 2018-
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`006082, at 3 (PTAB Jan. 31, 2020) (precedential)). However, the Federal
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`Circuit’s determination in Enhanced Security that the NetStalker manual
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`qualified as a printed publication was not dependent on a burdenshifting
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`framework,nor did the courttie its holding to the specific prosecution
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`context in which it arose. 739 F.3d at 1354-55. As such, we do not read
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`EnhancedSecurity in the narrow fashion Patent Ownerurges.
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`Patent Owneralso argues that Enhanced Security did not involve “‘a
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`product with a prohibitively high price or any discussion of howprice can
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`weigh against a finding of public accessibility.” Prelim. Resp. 25. This
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`argumentties into Patent Owner’s point that the high cost of the 904 slicer
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`meansthat the manuals were not reasonably accessible. See id. at 22-23,
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`34-37. On the current record, we are not persuaded that the cost of the 904
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`slicer requires a different result than Enhanced Security. As Patent Owner
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`recognizes, Enhanced Security does not discuss product cost in assessing
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`public accessibility of the product manual. 739 F.3d at 1354-1355; see also
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`id. at 1364-65 (O’Malley, J., dissenting) (disagreeing with the majority’s
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`conclusion that the manual had been shown to qualify as a printed
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`publication but not mentioning cost as a consideration). We do notinfer that
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`EnhancedSecurity is inapplicable when the product cost is high because the
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`decision fails to discuss product cost as Patent Owner argues. Patent Owner
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`asks us to infer from the lack of a discussion of product cost that Enhanced
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`Security is inapplicable when the productcostis high, but we are not
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`persuaded that such an inference is appropriate.
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`Patent Ownerdoesnot cite, and weare not aware of, Federal Circuit
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`decision or other binding authority® indicating that the expense of obtaining
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`8’ Patent Ownercites previous Board anddistrict court decisions reasoning
`that high cost weighs against a finding that a reference was publicly
`accessible. See Prelim. Resp. 22, 35-36. We have considered these
`decisions but they are not binding, they do not appearto present facts as
`closely analogous to Enhanced Security as this case, and they do notcite
`underlying Federal Circuit support for the proposition that cost of a
`reference can be determinative of public accessibility. See Patent Trial and
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`a reference can prevent a reference from being considered sufficiently
`accessible to qualify as a printed publication. There is a cost associated with
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`manypriorart references, such as the cost of attending a conference where a
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`reference is disseminated or the cost of obtaining scientific or technical
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`literature. But so far as we are aware, cost has not been highlighted, or even
`discussed, in the Federal Circuit’s printed publication precedents.’ Instead,
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`the Federal Circuit’s decisions focus on the difficulty an interested person
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`would havein locating the reference. See Medtronic, 891 F.3d at 1380 (“A
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`reference will be considered publicly accessible if it was disseminated or
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`otherwise madeavailable to the extent that persons interested and ordinarily
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`Appeal Board Standard Operating Procedure 2 § I.B (Rev. 10) (“A routine
`decision is binding in the case in whichit is made, evenifit is not
`designated as precedential or informative, but it is not otherwise binding
`authority.”)).
`° The Federal Circuit recently issued a nonprecedential decision rejecting a
`patentee’s argument that a product manual did not qualify as a printed
`publication, in part, because of the high cost of the product with which the
`manual wasdistributed. See Centripetal Networks, Inc. v. Cisco Systems,
`Inc., _ Fed. App’x __, slip op. at 13-17 (Fed. Cir. Mar. 10, 2021). We
`recognize that the productat issue in Centripetal Networks wasless
`expensive and the numberofsales was higher than the 904 slicer at issue
`here. See id. at 13, 15 (noting product cost of $25,000 with 586 sales over a
`two-year period). In addition, the manual in Centripetal Networks expressly
`‘permitted users to distribute the manual for noncommercial use, whereasthe
`manuals at issue here require users to obtain authorization from Weber
`before transferring the manualsto third parties. See id. at 15; Ex. 1005, 2;
`Ex. 1009, 2. Still, a common thread in both Centripetal Networks and this
`case is the evidence that the product was publicly advertised and the product
`and manual wereactually obtained by industry participants. See Centripetal
`Networks, slip op. at 15-16. Asto cost, the court explained that “[p]ublic
`accessibility is not limited to circumstances offree or academic
`distributions; ‘commercial distribution’ can qualify.” Jd. at 16 (citing
`Garrett Corp. v. United States, 422 F.2d 874, 877-78 (Ct. Cl. 1970)). Thus,
`Centripetal Networks tends to support the adequacyofPetitioner’s
`showing.
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`skilled in the subject matter or art exercising reasonable diligence can locate
`it.”); GoPro, 908 F.3d at 694 (“[A]ccessibility goes to the issue of whether
`interested membersof the relevant public could obtain the informationif
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`they wanted to.”) (emphasis added). “[E]ven relatively obscure documents
`qualify as priorart so long as the relevant public has a meansofaccessing
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`them.” GoPro, 908 F.3d at 694. Patent Owner does not convince us, based
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`on the current record, that the relevant public’s means of accessing the
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`references must be beneath a certain cost threshold. Nor do we discern from
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`the evidence currently on record in this case how inexpensive the means of
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`access would haveto beto satisfy the public accessibility standard Patent
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`Ownerproposes.
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`Patent Owneralso argues that the manuals were notdistributed to
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`enough customers to show public accessibility. See Prelim. Resp. 26-27.
`But as Patent Owner acknowledges, “[tJhere is no bright-line rule requiring a
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`certain numberof disclosures to customers for a product manualto be
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`publicly accessible.” Id. at 26; see also GoPro, 908 F.3d at 694 (“[I]f
`accessibility is proved, there is no requirement to show that particular
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`membersofthe public actually received the information.”’) (quoting
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`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir.
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`1988)). The numberofsales of 904 slicers for which Petitioner has
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`presented evidenceis similar to the “approximately a dozen” NetStalker
`installations that the Federal Circuit found sufficient to support a finding of
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`public accessibility in Enhanced Security. 739 F.3d at 1354—55. It is
`undisputed, on the current record, that Petitioner delivered 49 copies ofthe
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`2006 904 manualand 5 copies of the 2010 904 manuals withslicers.
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`Ex. 1011 4 15, 23.
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`Patent Owner questions how many customers unaffiliated with Weber
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`received a manual, see Prelim. Resp. 10-11, but the evidence currently
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`available does not suggest that only a few customers received them.
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`Petitioner’s evidence suggests that six different companies in the United
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`States having no apparentrelation to Weber received manuals. See Ex. 1011
`{ 16 (testifying, with underlying documentary support, regarding salesto
`ee
`ee And Petitioner’s evidence
`suggests that four different companies unrelated to Weberreceived the 2010
`904 manual. Jd. {25 (listing
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`received the 2010 904 manual with their purchase of the 904slicer).
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`Moreover, leaving aside the numberandidentities of the actual customers of
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`the 904 slicers during the time period