IP Law Daily, PATENT—Fed. Cir.: Board erred in finding Weber product manual was not prior art printed publication, (Feb 8, 2024)

By Robert Margolis, J.D.

Board erred in placing inordinate weight on alleged confidentiality restrictions associated with copyright notice on manuals.

The Patent Trial and Appeal Board erred in concluding that operating manuals provided with Weber, Inc.’s food slicer were not prior art printed publications that disclosed two challenged claim terms in two patents owned by Provisur Technologies, Inc., the United States Court of Appeals for the Federal Circuit has held. In addition to reversing the Board’s conclusion as to the manuals, the court vacated the Board’s conclusions that Weber failed to establish the unpatentability of certain claims in the two Provisur Patents, and remanded to the Board for further inter partes review (“IPR”) proceedings (Weber, Inc. v. Provisur Technologies, Inc., February 8, 2024, Reyna, J.).

Patents, prior art. Provisur owns two patents related to high-speed mechanical slicers used in food processing plants, for such items as meats and cheeses: U.S. Patent Nos. 10,639,812 (“the ’812 Patent”), and 10,625,436 (“the ’436 Patent”). Three components of the slicers were at issue in Weber’s IPR proceedings: (1) the “food article loading apparatus”; (2) the “food article feed apparatus”; and (3) the “food article stop gate.” Weber asserted that certain claims in the patents-in-issue were unpatentable as obvious based on its commercial food slicer operating manuals in combination with two prior art U.S. patents. Weber created and disseminated its manuals to accompany, and explain how to use, Weber’s commercial food slicer products. It discloses certain designs that Weber says make the above-listed components of Provisur’s slicers obvious.

Lawsuit, IPR proceedings. Provisur filed a federal lawsuit against Weber, alleging infringement of certain claims of the ’812 and ’436 Patents. Weber then filed its IPR proceedings, alleging the claims of those Patents to be unpatentable as obvious, citing its operating manuals and the prior art patents. The Board concluded, however, that the operating manuals do not qualify as printed publications based on a finding that they were distributed to just “ten unique customers.”

The claims relating to the ’812 Patent’s “food article feed apparatus” have a “disposed over” limitation that requires “a food article feed apparatus [be] disposed over [the] food article loading apparatus.” It also has a “stop gate” limitation, that the stop gate supports food articles “when the lift tray assembly is moved from its elevated position” to load new food articles. Moving on to the merits of Weber’s IPR challenge, the Board found that even if the manuals were printed publications, they do not disclose either the “disposed over” or the “stop gate” limitation. It rested the “disposed over” conclusion on its claim construction requiring that the feed apparatus and conveyor belts be “positioned above and in vertical and lateral alignment with” the food article loading apparatus and its lift tray assembly. As for the “stop gate” limitation, the Board determined that figures in the Weber operating manual did not disclose that the product bed conveyor of the operating manuals supported the food article when the product conveyor moves from its elevated position. Having concluded that the manuals did not disclose either limitation, the Board held that Weber did not meet its burden of proving unpatentability.

Printed publications. A “printed publication” sufficient to qualify as a prior art reference must be “sufficiently accessible to the public interested in the art.” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004). If the interested members of the public can locate the publication through reasonable diligence, then it is deemed sufficiently accessible. Weber presented evidence that the Weber manuals could be obtained either by purchasing a Weber slicer or by request made to a Weber employee. An employee also testified that the manuals were publicly accessible at tradeshows and at Weber factory showrooms. Provisur’s Vice-President conceded that Weber sold approximately 40 slicers during the relevant time period and that Weber’s “general practice” was to provide the manual with each purchase. This evidence sufficed for the court to reverse the Board's decision that the manuals were not printed publications.

The court concluded that the Board placed an “inordinate emphasis” on allegations that the manuals had confidentiality restrictions embodied by copyright notices on the manuals prohibiting copying or transferring the manuals. The Board also cited another supposed restriction in Weber’s terms and conditions, which stated that “drawings” and other documents remain Weber’s property. According to the court, by asserting copyright, Weber did not negate its own ability to make the manuals publicly accessible. The evidence of public accessibility described above was not outweighed by the fact that Weber claimed copyright in its manuals. In fact, Weber instructed its customers that should they re-sell the slicers, they should correspondingly transfer the manuals to the buyers, further showing that copyright assertions were not akin to confidentiality restrictions, the court noted.

“Disposed over” limitation. Giving “disposed over” its ordinary and customary reading, the court also rejected the Board’s claim construction that the term in Provisur’s patents requires the feed apparatus and conveyor belts to be “in vertical and lateral alignment” with the food article loading apparatus and its lift tray assembly. “Vertical and lateral alignment” were not specified in the claim limitations, and the court deemed “disposed of” not to be that specific, requiring only that the feed apparatus and conveyor belts be “generally positioned above” the food article loading apparatus and lift tray assembly. Since the drawings in the Weber operation manual disclosed the latter more general limitation, indeed Provisur conceded that it did, the court held that the Board erred in holding otherwise.

“Stop gate” limitation. The court also found that the Board erred in determining that Weber’s operating manuals did not disclose the “stop gate” limitations in two figures showing Weber’s “product bed conveyor.” It was clear that Weber’s product bed conveyor, like Provisur’s, supports the transport of a food product and prevents those products from sliding back in an uncontrolled manner. What was left in dispute was the position of the product bed conveyor in Weber’s manual when the lift tray moves from its elevated position to the loading position. The Board concluded that the figures in the Weber manuals did not depict a food article in the slicer or food conveyor, so they did not clearly show the position of the product bed conveyor at the time food is being loaded into the slicer. An expert testified that a skilled artisan would not need depiction of a food article to understand the position in the lift tray. The Board’s finding, therefore, was without substantial evidentiary support.

The case is Nos. 2022-1751 and 2022-1813.

Attorneys: Richard Crudo (Sterne Kessler Goldstein & Fox PLLC) for Weber, Inc. Craig C. Martin (Willkie Farr & Gallagher LLP) for Provisur Technologies, Inc.

Companies: Weber, Inc.; Provisur Technologies, Inc.

Cases: Patent FedCirNews USPTO GCNNews