IP Law Daily, PATENT—Fed. Cir.: Mixed ruling on appeal in infringement lawsuit between food processing equipment companies, (Oct 2, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Infringement of two patents upheld due to defendant’s concession; reversed on third for insufficient evidence, new trial on damages ordered for incorrect product value assessment.

The U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a federal district court’s decision in the patent dispute between Provisur Technologies, Inc. and Weber, Inc. and its affiliates. The Federal Circuit upheld the district court's findings of infringement regarding two of Provisur’s asserted patents due to Weber's concession that its non-infringement arguments were no longer valid. However, the appellate court reversed the infringement finding regarding the third asserted patent as Provisur failed to provide sufficient evidence that Weber’s accused product met the advance-to-fill conveyor requirement of the asserted claim. Additionally, the court reversed the district court’s findings of willfulness and ordered a new trial on damages, citing errors in the application of the entire market value rule (Provisur Technologies, Inc. v. Weber, Inc., No. 23-1438 (Fed. Cir. Oct. 2, 2024)).

Background. Provisur, the plaintiff/appellee, specializes in designing and manufacturing high-speed mechanical slicers and packaging equipment in the food-processing industry. Weber and its affiliates, the defendants/appellants, are prominent players in the food-processing machinery market, offering products that directly compete with Provisur’s slicers and packaging systems.

In this lawsuit, Provisur asserted its U.S. Patent Nos. 10,625,436 (the ’436 patent), 10,639,812 (the ’812 patent) and 7,065,936 (the ’936 patent). The ’436 and ’812 patents cover high-speed mechanical slicers used to slice and package food products, such as meats and cheeses. These patents share a common specification and provide mechanisms for efficiently feeding food articles into slicers. The ’936 patent pertains to a conveyor system for loading sliced food into packaging, including an advance-to-fill embodiment that allows the conveyor to fill rows of pockets with food.

Provisur filed this lawsuit alleging that Weber’s slicers and SmartLoader products infringed its asserted patents. In October 2022, a jury found Weber willfully infringed claims 9–12 and 16 of the ’436 patent, claims 1, 7, and 8 of the ’812 patent, and claim 14 of the ’936 patent. The district court denied Weber’s post-trial motions for judgment as a matter of law (JMOL) on infringement, willfulness, and damages. Weber appealed.

Infringement. The Federal Circuit affirmed the district court’s findings of infringement for the ’436 and ’812 patents. Weber conceded that its non-infringement arguments were no longer viable after an intervening Federal Circuit decision. Consequently, the appellate court confirmed the jury's verdict that Weber's slicers infringed the asserted claims of these patents.

In contrast, the Federal Circuit reversed the district court’s ruling on infringement of the ’936 patent. The core issue was whether Weber's SmartLoader product satisfied the advance-to-fill limitation of claim 14. The court found that Provisur's evidence was insufficient to establish that Weber's SmartLoader, sold as a retract-to-fill conveyor, could be readily reconfigured by customers to function as an advance-to-fill system. Although Provisur's expert testified that Weber's SmartLoader could theoretically be reprogrammed to operate in an infringing manner, the court noted that such reprogramming required access to proprietary controls unavailable to customers. Citing Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001), the court reiterated that "a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim." Consequently, the Federal Circuit reversed the district court's denial of JMOL for non-infringement of the ’936 patent.

Willfulness reversed. The Federal Circuit also overturned the jury's finding of willful infringement. Under 35 U.S.C. § 298, an accused infringer's failure to obtain counsel's advice cannot be used as evidence of willfulness. Although the district court had excluded testimony about Weber's failure to obtain legal counsel, Provisur's expert testified that Weber did not consult a third party to evaluate its potential patent exposure.

The appellate court determined that this testimony improperly circumvented § 298 by equating advice from third-party evaluators with legal counsel. Furthermore, the court held that the remaining evidence was insufficient to establish the specific intent required for willful infringement. Citing BASF Plant Sci., LP v. Commonwealth Sci. and Indus. Rsch. Org., 28 F.4th 1247, 1274 (Fed. Cir. 2022), the appellate court emphasized that mere knowledge of the patent is insufficient—there must be a deliberate intent to infringe. The Federal Circuit thus reversed the district court's denial of JMOL on willfulness.

Damages and new trial. In addition to reversing the findings on infringement and willfulness, the Federal Circuit ordered a new trial on damages. The jury had awarded Provisur approximately $10.5 million based on a reasonable royalty calculation that used the entire market value of Weber's slicing lines as the royalty base. The court found this improper, as Provisur had not demonstrated that the patented features drove customer demand for the entire slicing lines. Citing LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012), the court reiterated that royalties should generally be apportioned to reflect the value of the patented features, and the entire market value rule should only apply if the patented features form the basis for customer demand.

Provisur's expert applied the entire market value rule without presenting sufficient evidence to support its use. While Provisur's expert testified that the patented features were key selling points, the court noted that there was no evidence—such as customer surveys or market studies—to substantiate this claim. Without such evidence, the Federal Circuit concluded that the district court had abused its discretion in applying the entire market value rule. Consequently, the court reversed the denial of a new trial on damages.

Conclusion. Awarding costs to Weber, the Federal Circuit affirmed the district court's findings of infringement for Provisur's ’436 and ’812 patents but reversed the finding of infringement for the ’936 patent. The court also reversed the district court’s rulings on willfulness and damages, remanding the case for further proceedings, including a new trial on damages.

The Case is No. 23-1438.

Judge: Taranto, R.

Attorneys: Craig C. Martin (Willkie Farr & Gallagher LLP) for Provisur Technologies, Inc. William Milliken (Sterne Kessler Goldstein & Fox PLLC) for Weber, Inc., Textor, Inc., Weber Maschinenbau GmbH Neubrandenburg, Textor Maschinenbau GmbH, and Weber Maschinenbau Breidenbach.

Companies: Provisur Technologies, Inc.; Weber, Inc.; Textor, Inc.; Weber Maschinenbau GmbH Neubrandenburg; Textor Maschinenbau GmbH; Weber Maschinenbau Breidenbach

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