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Weber, Inc. v. Provisur Technologies, Inc.

Docket IPR2019-01461, Patent Trial and Appeal Board (Aug. 9, 2019)
Frances Ippolito, Jon Jurgovan, Mitchell Weatherly, Timothy Goodson, presiding
Case TypeInter Partes Review
Patent
7533513
Patent Owner Provisur Technologies, Inc.
Petitioner Weber, Inc.
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40 Other other court decision: Other other court decision

Document IPR2019-01461, No. 40 Other other court decision - Other other court decision (P.T.A.B. Feb. 23, 2023)
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.
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39 Other Fed Circuit mandate: Other Fed Circuit mandate

Document IPR2019-01461, No. 39 Other Fed Circuit mandate - Other Fed Circuit mandate (P.T.A.B. Feb. 23, 2023)
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.
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36 Termination Decision Document: Termination Decision Document

Document IPR2019-01461, No. 36 Termination Decision Document - Termination Decision Document (P.T.A.B. Feb. 10, 2021)
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.
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36 Final Decision: JUDGMENTFinal Written DecisionDetermining Some Challenged Claims Unpatentable35 USC § 318a

Document IPR2019-01461, No. 36 Final Decision - JUDGMENTFinal Written DecisionDetermining Some Challenged Claims Unpatentable35 USC § 318a (P.T.A.B. Feb. 10, 2021)
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.
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35 Hearing Transcript: Hearing Transcript

Document IPR2019-01461, No. 35 Hearing Transcript - Hearing Transcript (P.T.A.B. Jan. 28, 2021)

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33 Order: Order Trial Hearing 37 CFR 4270

Document IPR2019-01461, No. 33 Order - Order Trial Hearing 37 CFR 4270 (P.T.A.B. Oct. 30, 2020)

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30 Order Conduct of Proceeding: Order Conduct of the Proceeding

Document IPR2019-01461, No. 30 Order Conduct of Proceeding - Order Conduct of the Proceeding (P.T.A.B. Oct. 13, 2020)

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