Further, during the prosecution history of the Asserted Patents, Provisur made specific concessions as to the terms “upper conveyor assembly” and “food article stop gate” to distinguish the alleged invention from the prior art.

When read in light of the ’436 patent specification and the prosecution history, this phrase fails to inform those skilled in the art of the scope of the invention with reasonable certainty, as required.

Extrinsic evidence, such as expert opinions and pertinent dictionary definitions may be helpful in determining the ordinary meaning that a term would have to a skilled artisan at the relevant time.

Second, the use of the term “assembly” indicates to a person of ordinary skill in the art that the upper conveyor assembly is a collection of components that form a functional unit of the slicing machine.

Provisur’s claim constructions confuse the issues, either by failing to delineate the metes and bounds of the disputed terms, ignoring clarifying statements made during the prosecution history, or both.

is titled High Speed Slicing Machine, was issued by the USPTO on April 21, 2020, and lists Scott A. Lindee, James E. Pasek, David Hancock, and Thomas C. Wolcott as inventors.

is titled High Speed Slicing Machine, was issued by the USPTO on May 5, 2020, and lists Scott A. Lindee, James E. Pasek, David Hancock, and Thomas C. Wolcott as inventors.

On information and belief and as alleged by Counterclaim Defendant, Provisur Technologies, Inc. is a Delaware corporation with its principal place of business at 222 North LaSalle Street, Suite 720 Chicago, Illinois, 60601.

adjudicating and declaring that the case is exceptional within the meaning of 35 U.S.C. § 285, and awarding Counterclaim Plaintiffs attorney fees and costs reasonably incurred in prosecuting this action; and

The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court’s CM/ECF system per Local Rule 5.1 on this 3rd day of August 2020.

Plaintiff’s Position: Provisur believes Defendants’ proposed expert testimony—which is extrinsic evidence from outside the patent—will not be helpful in resolving the legal questions of patent claim construction in this case.

Defendants’ Position: Defendants intend to call their expert Dr. Reinholtz to provide live testimony at the Claim Construction Hearing concerning the opinions expressed in his affidavit.

Live expert testimony will be especially helpful in educating the Court about technical information material to the parties’ claim construction disputes.

the act or process of building up a complete unit (as a motor vehicle) using parts already in themselves finished manufactured products.

See, e.g., ’436 Patent File History, March 4, 2019 Non-Final Rejection at 2-17; June 4, 2019 Response to Office Action at 8-16; Term is indefinite, not possible to construe is not indefinite U.S. Patent No. 10,625,436 & U.S. Patent No. 10,639,812 June 4, 2019 Final Rejection at 2- 18; November 20, 2019 Applicant Initiated Interview Summary; December 11, 2019 Response to Office Action at 7-9; December 11, 2019 Amendment at 3-6; January 1, 2020 Non Final Rejection at 2-4; January 28, 2020 Response to Office Action at 1-2; January 28, 2020 Terminal Disclaimer; March 1, 2020 Notice of Allowance at 2-4.

On information and belief, Textor Maschinenbau GmbH designs, manufactures, and directs global sales and marketing of food processing machinery in the slicing category.

Provisur manages global brands of food processing technology that make and sell an array of market-leading forming, slicing, defrosting, marinating, tenderizing, injecting, grinding, mixing, separation, coating, frying, cooking, and smoking products.

Weber, Inc. also maintains a North American Technology Center in Kansas City, Missouri, to, among other things, market, demonstrate, and educate customers from throughout United States about its products.

U.S. Patent No. 10,625,436 (“the ’436 patent”), entitled “High Speed Splicing Machine,” was duly issued by the USPTO on April 21, 2020, and lists named inventors Scott A. Lindee, James E. Pasek, David Hancock, and Thomas C. Wolcott.

U.S. Patent No. 10,639,812 (“the ’812 patent”), entitled “High Speed Splicing Machine,” was duly issued by the USPTO on May 5, 2020, and lists named inventors Scott A. Lindee, James E. Pasek, David Hancock, and Thomas C. Wolcott.