IP Law Daily, PATENT—Fed. Cir.: Obviousness of certain industrial food machine patent claims upheld, (Dec 15, 2022)

By Kevin M. Finson, J.D.

The Federal Circuit affirmed the PTAB’s obviousness rulings because any error in claim construction was harmless and the rulings were supported by substantial evidence.

The PTAB did not err in finding that many claims in two patents relating to industrial food machines were obvious, the U.S. Court of Appeals for the Federal Circuit has held. The claim construction adopted by the Board was consistent with the claim language, and the obviousness determinations were supported by expert testimony. The outcome would not have changed even had the Board adopted the patent holder’s proposed narrow construction (Provisur Technologies, Inc. v. Weber, Inc., December 15, 2022, Stark, L.).

Provisur Technologies, Inc. (Provisur) was the assignee of U.S. Patents Nos. 7,065,936 (the ’936 patent) and 7,533,513 (the ’513 patent), which covered an apparatus and method, respectively, for an industrial food production device for depositing food into containers. Weber, Inc. (Weber) petitioned for inter partes review of both patents on the ground of obviousness. The Patent Trial and Appeal Board (PTAB) found most, but not all, of the claims unpatentable as obvious. Provisur appealed, arguing that the Board erred in its claim construction. Weber cross-appealed, arguing that the Board erred by not finding all of the claims unpatentable as obvious.

Claim construction. Both patents required “multi-fill” deposition of slices of food into containers. The Board construed “multi-fill” to include non-simultaneous deposition of food, allowing the claims to be met by a system where food was deposited one piece at a time into containers in a given row, so long as multiple containers in that row are filled before any container in the next is filled.

Provisur argued that “multi-fill” should have been construed more narrowly, to require that a single row be filled simultaneously. The Federal Circuit found that Provisur was able to provide no evidence from the specification or claim language to support its interpretation. Moreover, the fact that the preferred embodiment used simultaneous deposition did not limit the claim to that embodiment. Additionally, the court noted that the Board had expressly analyzed the claims under Provisur’s proposed construction and found that even if it had adopted the narrow construction, the claims would still have been obvious. Any error would have been harmless.

Obviousness. On cross-appeal, Weber argued that the Board erred by finding that Weber had failed to show that a person of ordinary skill in the art would have been motivated to produce the arrangement of “reverse fill” claims, meaning claims involving depositing drafts when a conveyor started from a retracted position and moved to an extended position. The court reviewed the record and found that the Board had heard testimony that depositing food items in that direction would add needless complexity and increase the likelihood of malfunction. This was substantial evidence upon which the Board was entitled to rely.

The Federal Circuit affirmed the decisions of the Board in all respects.

The case is Nos. 2021-1851, 2021-1852, 2021-1892, 2021-1893.

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

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

Cases: Patent FedCirNews USPTO