Provisur argues that because simultaneous deposits are more efficient and the specifications emphasize the benefits of the invention, reading the claims in the context of the written descriptions necessitates finding a simulta- neity requirement.

As a final challenge to the Board’s construction, Provi- sur asserts that the Board violated the Administrative Pro- cedure Act (“APA”), 5 U.S.C. § 554(b) and (c), in construing the multi-fill limitation because, in Provisur’s view, the parties did not dispute the meaning of the term.

Based on this substantial evidence, the Board found that Honsberg teaches “that multiple drafts are deposited in a single with- drawal of the slide in the multi-laned apparatus.” The Board’s conclusions regarding the Weber466-Hol- lymatic combination were similar and equally supported by the record.

In sum, there was substantial evidence to support the Board’s findings that both Honsberg and Weber466 sug- gest simultaneously depositing multiple drafts into multi- ple containers in a row, rendering the claims at issue in Provisur’s appeal invalid as obvious even under Provisur’s PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. preferred construction of the “multi-fill” limitation.

The Board recognized that because of this increased complexity, a person of ordinary skill in the art would have lacked motivation to combine the refer- ences and modify them to obtain the reverse fill configura- tion.

United States Court of Appeals for the Federal Circuit

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019-

In accordance with the judgment of this Court, entered December 15, 2022, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.

But this falls far short of expressing a “manifest exclusion or restriction, representing a clear disavowal of claim scope.” See Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar

Petitioner contends that Patent Owner’s argument that Honsberg is limited to “piece by piece” deposition subverts Honsberg’s goal of making efficient use of the dwell period when the production line is stopped to form packages.

Patent Owner argues that Petitioner made no effort to explain how one of ordinary skill in the art would be expected to use (or not use) the different parts of Honsberg and Hollymatic to coordinate the deposition of multiple drafts/rows.

Patent Owner contends that Honsberg and Hollymatic focus on precise, careful placement of items into packaging and not throughput, and that adding a second withdraw would have made the deposition process “completely unreliable.” Id. at 46–47 (citing Ex. 1005, 2:5–9; 2:19–23; Ex. 1006, 2; Ex. 2002 ¶ 127).

Reviewing the information presented in the Petition, Response, Reply, Sur-Reply, and accompanying exhibits and testimony, we determine that Petitioner shows by a preponderance of the evidence that claims 5 and 8–11 are unpatentable as obvious over the combination of Honsberg, Hollymatic, and Mello.

But this falls far short of expressing a “manifest exclusion or restriction, representing a clear disavowal of claim scope.” See Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar

Petitioner contends that Patent Owner’s argument that Honsberg is limited to “piece by piece” deposition subverts Honsberg’s goal of making efficient use of the dwell period when the production line is stopped to form packages.

Patent Owner contends that Honsberg and Hollymatic focus on precise, careful placement of items into packaging and not throughput, and that adding a second withdraw would have made the deposition process “completely unreliable.” Id. at 46–47 (citing Ex. 1005, 2:5–9; 2:19–23; Ex. 1006, 2; Ex. 2002 ¶ 127).

Reviewing the information presented in the Petition, Response, Reply, Sur-Reply, and accompanying exhibits and testimony, we determine that Petitioner shows by a preponderance of the evidence that claims 5 and 8–11 are unpatentable as obvious over the combination of Honsberg, Hollymatic, and Mello.

Petitioner contends that a person of ordinary skill in the art would have understood this disclosure as a “first position arranged to deposit food product drafts into said container portions of said first row by said conveying surface.” Pet. 63–64; Ex. 1003 ¶ 199.

Sand and Weber pointed out, Mr. Palmer confirmed that at the time of the alleged invention of the challenged patents, a POSA would have been able to incorporate servomotors, controllers, conveyors, and sensors into a wide array of systems.

And Mr. Palmer, again, here’s the quote that I read you earlier, noted that “Modifications like this were within the skill of a POSA.” Now add, Your Honors, that he was working in Oscar Mayer in the late ‘90s, and that was the timeframe that we were discussing here when I asked this question.

So again, both experts agree that a POSA would have had the skill to implement and use servomotors, controllers, sensors, and other necessary features to arrive at an embodiment within the scope of the claims as proposed by Weber in its Petition.

JUDGE JURGOVAN: Well how do you respond to their claim that, you know, Mahaffy 535 and Sandberg are representative of the general knowledge of the person of ordinary skill in the art would have had about arranging drafts for food product on conveyor belts to be deposited in containers?

So referring to Slide 14, Provisur’s Demonstrative, you can actually see here a quote from the Petition that a POSA would have been motivated to use the double row grouping of containers and shuttle conveyor disclosed in Hollymatic.

The parties must request a conference call with the Board at least four (4) business days before the hearing to present any unresolved objection regarding the propriety of any demonstrative exhibit.

The Board asks the parties to confine their objections to those relating to egregious violations that are prejudicial to the administration of justice.

During the hearing, the parties are reminded to identify clearly and specifically each paper referenced (e.g., by slide or screen number for a demonstrative) to ensure the clarity and accuracy of the court reporter’s transcript and for the benefit of all participants appearing electronically.

If at any time during the hearing, counsel encounters technical or other difficulties that fundamentally undermine counsel’s ability to adequately represent its client, please let the panel know immediately, and adjustments will be made.

For the reasons given, it is: ORDERED that oral argument, conducted pursuant to the procedures outlined above, shall commence at 1:00 pm Eastern time on November 17, 2020, by video.

Before MITCHELL G. WEATHERLY, FRANCES L. IPPOLITO, and JON M. JURGOVAN, Administrative Patent Judges.

A. Background By email communications on September 10, 2020 (identified as Exhibit 3001 in each of IPR2019-01461 and IPR2019-01462), Patent Owner sought authorization to file motions to strike alleged new arguments and evidence in Petitioner’s Replies and accompanying Exhibits (in each of IPR2019-01461 and IPR2019-01462, Paper 22 (Petitioner’s Reply), Section (II)(A)(4), 14–17 or 14–18; Ex. 1023–1027; Ex. 1021 ¶¶ 36–91).

A petitioner reply may only respond to arguments raised in the corresponding patent owner response.

Although the Consolidated Trial Practice Guide (November 2019) (“CTPG”), https://www.uspto.gov/TrialPracticeGuideConsolidated, provides that requesting a motion to strike may be appropriate when an opposing party raises new issues, the CTPG also provides, “[i]n most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply.” CTPG, 80.

We do, however, grant Patent Owner an opportunity to file a listing in each case identifying by page and line number the portion of Petitioner’s Replies and Exhibits that it believes introduce arguments or evidence that it considers to be improper under Rule 42.23(b).