IP Law Daily, PATENT—Fed. Cir.: PTAB must reconsider validity of food slicer patent, (Sep 27, 2022)

By George Basharis, J.D.

Federal Circuit vacated Board’s findings of obviousness over prior inventions and remanded the case for further consideration.

The Patent Trial and Appeal Board violated the Administrative Procedure Act (APA) by not fully explaining why it found certain claims in a food slicer patent to be obvious over prior inventions, the Federal Circuit has determined. Weber, Inc. challenged the validity of a rival food processor equipment maker’s patent for a food slicer that uses imaging technology to determine slice quality. The Board found most of the patent claims to be invalid because prior art inventions, when combined, would describe the same technology; however, the Board did not fully address the patent owner’s argument that the prior art did not render obvious a particular feature of its food slicer equipment. The court also found that the Board’s determination of claim validity was inconsistent with its finding of obviousness regarding other claims in the food slicer patent (Provisur Technologies, Inc. v. Weber, Inc., September 27, 2022, Prost, S.).

Weber petitioned for inter partes review (IPR) of U.S. Patent No. 6,997,089 (“the ’089 patent”). Provisur Technologies, Inc. (Provisur) owns the ’089 patent, which describes a method and system for “classifying slices or a portion cut from a food product according to an optical image of the slice.” The ’089 patent describes how food slices are moved on a series of conveyors to a weigh conveyor. An image processing system arranged above the weigh conveyor captures an image of the top slice. The image is then analyzed pixel-by-pixel and compared to predetermined or programmable standards. The food is then then classified according to its fat content or flaws. The preferred camera according to the ’089 patent is an “Electrim EDC-1000N” black and white digital camera.

Weber’s IPR petition claimed that the ’089 patent was obvious over prior inventions. According to Weber, prior art, when combined, described a similar technology for capturing images of food slices. Attempting to differentiate the ’089 patent from prior art, Provisur argued that prior art did not disclose the same kind of digital camera for use in imaging, although prior inventions did describe the use of a camera “of any known type.” Provisur also argued that Weber failed to show how the prior art combinations would have been able to determine a “surface area of the top slice” from “pixel-by-pixel image data” as required by the ’089 patent.

Addressing Provisur’s argument that the prior art did not disclose a digital camera, Weber offered new evidence and expert testimony to show that the camera used by the prior inventions worked the same way as the ’089 patent’s claimed Electrim EDC-1000N digital camera. Provisur argued that the new evidence and expert testimony should be excluded because it was unduly prejudicial and introduced too late. The Board rejected the argument, and, on the merits, determined that all but two of the challenged claims were unpatentable. The two claims that the Board found to be patentable concerned the placement of a digital camera above the weigh conveyor of the slicer.

Provisur and Weber both appealed the Board’s decision. Provisur argued that the Board abused its discretion by denying Provisur’s motion to exclude the Electrim-related evidence and violated the APA by failing to fully address its patentability arguments. Weber contended that the Board erred in upholding the patentability of two of the ’089 patent’s claims.

Evidence exclusion. The court found that the Board did not abuse its discretion in allowing Weber to introduce new evidence in its reply to Provisur’s response. The court noted that Weber’s IPR petition purported to explain why the ’089 patent’s claims were invalid, Provisur’s response argued that the prior art did not disclose a digital camera, and Weber’s reply explained that the prior art used the same type of camera as the one described in the ’089. Consequently, the Board properly concluded that the reply evidence was both directly responsive to Provisur’s arguments and highly probative. More importantly, the court explained, Weber’s invalidity theories did not change, nor did the reply “fill any holes” in Weber’s IPR petition. Under the circumstances, it was appropriate for the Board to admit the new evidence, the court concluded.

Moreover, the evidence was not submitted “too late” as Provisur contented. By concluding that Weber’s reply evidence properly rebutted Provisur’s arguments, the Board necessarily also determined that Weber didn’t have to submit the evidence with its petition. The Board also did not err by rejecting Provisur’s claims of prejudice. The evidence was highly probative, in fact, dispositive, the court noted, and Provisur had an opportunity to respond by cross-examining Weber’s expert witness or by filing a sur-reply with the Board.

Board’s analysis. However, the Board did violate the APA by failing to explain how prior art combinations suggested the surface area limitation claimed by the ’089 patent. The Board’s patentability analysis was limited to the ’089 patent’s “digital image receiving device” claim. It did not explain how prior-art combinations determined a surface area of the top slice from “pixel-by-pixel” image data. Provisur argued that the prior art did not render obvious the surface area limitation claimed by the ’089 patent, and the Board failed to address the argument. The APA requires the Board to “fully and particularly set out the bases upon which it reached its decision,” the court explained. Consequently, the court vacated the Board’s judgment as to all claims found unpatentable and remanded for the limited purpose of the Board’s consideration of Provisur’s surface-area-limitation arguments.

The court also vacated the Board’s determination that two of the ’089 patent’s claims were not obvious over prior inventions. In concluding that the claims were patentable over the prior art, the Board agreed with Provisur that the prior art did not disclose or render obvious the placement of a camera above a weigh conveyor. However, Weber did not rely on the physical arrangement of a camera over a weighing conveyor, the court noted. Instead, Weber relied on the physical components described in prior art—conveyors and a digital camera—and then argued that a person of skill in the art would choose to position the weigh conveyor under the camera as claimed by the ’089 patent.

Moreover, the Board’s findings as to the two claims were inconsistent with findings it made about other claims in the ’089 patent found to be invalid. The invalidated claims required imaging and weighing food slices “at the same time.” According to Weber’s IPR, a skilled artisan would combine the prior art disclosed by the two claims at issue by arranging a camera under the weighing conveyor to avoid imaging and weighing food slices at different times. Weber did not rely on the physical components of the prior invention; it relied only on the concept of weighing and imaging at the same time, the court explained.

The Case is No. 21-1942.

Attorneys: Sara Tonnies Horton (Willkie Farr & Gallagher LLP) for Provisur Technologies, Inc. Tyler Dutton (Sterne Kessler Goldstein & Fox, PLLC) for Weber, Inc.

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

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