Provisur Technologies, Inc. v. Weber, Inc.

Opinion

Case: 21-1851 Document: 57 Page: 1 Filed: 12/15/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

PROVISUR TECHNOLOGIES, INC., Appellant

v.

WEBER, INC., Cross-Appellant ______________________

2021-1851, 2021-1852, 2021-1892, 2021-1893 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 01461, IPR2019-01462. ______________________

Decided: December 15, 2022 ______________________

MICHAEL BABBITT, Willkie Farr & Gallagher LLP, Chi- cago, IL, argued for appellant. Also represented by REN- HOW HARN, SARA TONNIES HORTON, CRAIG C. MARTIN.

JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for cross-appellant. Also repre- sented by DONALD BANOWIT, BRADY GLEASON, RALPH WIL- SON POWERS. ______________________ Case: 21-1851 Document: 57 Page: 2 Filed: 12/15/2022

Before PROST, REYNA, and STARK, Circuit Judges. STARK, Circuit Judge. On petitions filed by Weber, Inc. (“Weber”), the Patent Trial and Appeal Board (“Board”) instituted inter partes review (“IPR”) proceedings as to the patentability of U.S. Patent Nos. 7,065,936 (the “’936 patent”) and 7,533,513 (the “’513 patent”), which are assigned to Provisur Technol- ogies, Inc. (“Provisur”). The ’936 patent covers an appa- ratus and the ’513 patent covers a method, both relating to an industrial food production device for depositing food into containers. 1 The Board found most – but not all – of the claims in both patents to be unpatentable as obvious. Provisur appeals based on what it contends is an erro- neous construction of the patents’ “multi-fill” limitation. We conclude that the Board’s construction, which rejected Provisur’s proposal to limit the claims to simultaneous de- posits, was correct – and, even if it was not, any error was harmless. Weber cross-appeals the Board’s failure to find certain claims of the ’936 and ’513 patents unpatentable. With respect to those claims, substantial evidence supports the Board’s finding that Weber did not prove the required motivation to combine. Accordingly, we affirm the Board’s determinations. I The ’936 and ’513 patents teach systems and methods that may be used in an industrial food processing facility to place prepared stacks of sliced food into containers. More particularly, the patents teach depositing drafts (that is, piles, stacks, or groups of thinly sliced food) into a grid of at least two by two containers (which the patents also call “pockets”). The invention uses a shuttle conveyer to

1 The ’513 patent is a continuation of the ’936 patent. They share a materially identical written description. Case: 21-1851 Document: 57 Page: 3 Filed: 12/15/2022

PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 3

“fill the first row of pockets with drafts” before “retract[ing] to fill the second row of pockets.” ’936 patent at 2:50-54. Claim 1 of the ’936 patent recites: [a]n apparatus for filling food product drafts into packages, comprising:

a supply of open top container portions ar- ranged in rows that are displaced along a longitudinal direction and having a first row and a longitudinally displaced second row and carried by an elongated web of film and movable by said web along said longitudinal direction into a fill station; and

a shuttle conveyor having a conveying sur- face, said shuttle conveyor comprises a device to retract and to extend said con- veying surface, said conveying surface arranged above said fill station and having an end region longitudinally movable to a first position arranged to deposit food product drafts into said container portions of said first row by said conveying surface, and while said web remains stationary, said device re- tracts or extends said conveying surface to reposition said end region to a second position arranged to deposit food prod- uct drafts carried on said conveying surface into said container portions of said second row. (Emphasis added) Claim 1 of the ’513 patent recites: [a] method for filling food product drafts into packages, comprising the steps of: Case: 21-1851 Document: 57 Page: 4 Filed: 12/15/2022

supplying open top container portions ar- ranged in rows that are spaced-apart along a longitudinal direction and hav- ing a first row and a longitudinally spaced-apart second row and connected to move longitudinally together, said first and second rows movable together along said longitudinal direction into a fill station;

providing a conveyor having a retractable and extendable conveying surface, said conveying surface arranged above said fill station and having an end region longitudinally movable to a first posi- tion arranged to deposit food product drafts into said container portions of said first row by said conveying sur- face, moving said end region to said first position and depositing food drafts into container portions of said first row; and

while said first and second rows are in said fill station, retracting or extending said conveying surface to reposition said end region to a second position arranged to deposit food product drafts carried on said conveying surface into said con- tainer portions of said second row. (Emphasis added) The emphasis shows what we, following the lead of the parties and the Board, refer to as the “multi- fill” limitation. Dependent claim 6 of the ’513 patent is representative of the “reverse-fill” limitation that is the subject of Weber’s cross appeal. It recites: Case: 21-1851 Document: 57 Page: 5 Filed: 12/15/2022

PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 5

[t]he method according to claim 1, comprising the further step of: after said first and second rows are filled, while said first and second rows advance to locate said succeeding group of empty rows of container portions in said fill station, said conveying surface retracts from an advanced position to a retracted position to fill a new first row of a succeeding group of empty rows of container portions. Weber petitioned the Board to institute IPR proceed- ings on every claim of the ’936 and ’513 patents. Weber’s petitions relied on three pieces of prior art relevant to this appeal: Honsberg, Weber446, and Hollymatic. 2 Honsberg teaches an apparatus for placing food into containers. It specifically discloses positioning food on the end of a con- veyor above the containers. Then the conveyer is abruptly retracted so the ground is “taken from under the feet” of the food products, causing the food to drop into the contain- ers below. J.A. 1229. Weber446 similarly describes depos- iting food by abruptly moving the conveyer so that the ground is removed from beneath the food. Hollymatic dis- closes a conveyer capable of multiple retractions that de- posit product into multiple rows of containers and further teaches a second retraction step. Weber argued that the independent claims of both pa- tents were obvious over combinations of (1) Honsberg and Hollymatic or (2) Weber446 and Hollymatic. The Board in- stituted and decided that most of the claims were un- patentable for obviousness over both of Weber’s combinations. In its Final Written Decisions, the Board found that Weber failed to prove the obviousness of only

2 Weber relied on other prior art, in combination with Honsberg and Hollymatic, to satisfy additional limi- tations found only in dependent claims, none of which is pertinent to the appeal or cross-appeal. Case: 21-1851 Document: 57 Page: 6 Filed: 12/15/2022

the following claims: claims 5, 14, and 21 of the ’936 patent and claims 6 and 7 of the ’513 patent. Provisur and Weber both appealed. 3 II The parties agree that claims 1 and 10 of the ’936 pa- tent and claim 1 of the ’513 patent require “multi-fill” dep- osition (also referred to as deposit) of slices into containers. They further agree that the “multi-fill” limitation requires the deposition of (1) multiple drafts into (2) multiple recep- tacles in a row before (3) moving to a new row to repeat the process. They dispute whether the deposits in any single row must occur simultaneously and, if so, whether the prior art taught simultaneous deposits. We review the Board’s legal conclusions, including its claim construction, de novo and underlying factual findings for substantial evidence. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021). A The Board construed “multi-fill” to include non-simul- taneous deposition of drafts, including what the Board de- scribed as “piece-by-piece” or “one-by-one” deposition. In other words, the Board found the claims may be met by de- positing drafts one at a time into the containers in a given row so long as multiple containers in that row are filled with drafts before any container in the next row is filled. That is, as the Board explained, the multi-fill claim lan- guage is broad enough to cover “when drafts have a stag- gered arrangement on the conveyor belt and drafts are

3 The Board had subject-matter jurisdiction under 35 U.S.C. § 6. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). Case: 21-1851 Document: 57 Page: 7 Filed: 12/15/2022

PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 7

deposited one by one in the package pockets of each row” before moving to the next row. J.A. 14, 87. Provisur argues that the Board erred in rejecting its proposed narrower construction, which would require that all pockets in a single row be filled simultaneously. We agree with the Board that the asserted claims do not re- quire all drafts in a row to be deposited at the same time. The patents’ claims describe placing “drafts” into “con- tainer portions” in a first row and then depositing “drafts” into additional “container portions” in a second row. ’936 patent at claim 1; ’513 patent at claim 1. The claims con- tain no language requiring or even suggesting that deposits in a given row must occur simultaneously. Nothing in the patents’ written description or prosecution history narrows the claims in this manner either. Provisur nonetheless contends that its proposed simul- taneity requirement is evident from the ’513 patent’s use of the plural forms of “drafts” and “container portions.” But the plural language can also be read, instead, merely to mean that multiple drafts need to be placed – whether one at a time or simultaneously – into the multiple containers in each row before the device moves to a new row. Or, as the Board put it, “the claims do not recite any particular timing or order for how the drafts are deposited: the claims merely require depositing a row of drafts in package pock- ets at each of the first and second positions.” J.A. 14, 87. We agree with the Board’s rejection of Provisur’s proposed construction. Provisur also observes that the only embodiment dis- closed in the patents shows simultaneous deposits. Claim scope is not generally limited to the disclosed embodi- ments, even when the patent depicts only one. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[W]e have expressly rejected the contention that if a patent de- scribes only a single embodiment, the claims of the patent Case: 21-1851 Document: 57 Page: 8 Filed: 12/15/2022

must be construed as being limited to that embodiment.”). Provisur offers no persuasive explanation as to why a per- son of ordinary skill in the art would read its claims as lim- ited to the one embodiment. Provisur argues that because simultaneous deposits are more efficient and the specifications emphasize the benefits of the invention, reading the claims in the context of the written descriptions necessitates finding a simulta- neity requirement. Yet the portions of the patents touting the benefits of the invention do not provide a definition or constitute a clear and unmistakable disclaimer of non-sim- ultaneous deposits. Further, as we have previously held, “not every benefit flowing from an invention is a claim lim- itation.” i4i Ltd. v. Microsoft Corp., 598 F.3d 831, 843 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011). As a final challenge to the Board’s construction, Provi- sur asserts that the Board violated the Administrative Pro- cedure Act (“APA”), 5 U.S.C. § 554(b) and (c), in construing the multi-fill limitation because, in Provisur’s view, the parties did not dispute the meaning of the term. Provisur complains that it was unfairly denied the opportunity to present its claim construction position and to respond to the construction the Board adopted. We disagree. Provisur had adequate notice that the Board might adopt a construction of the “multi-fill” limita- tion that did not require simultaneity. Although Weber did not challenge Provisur’s preferred construction in its re- plies, it had argued in its petitions that the Board should apply the plain and ordinary meaning of the term. Provi- sur, thus, was on notice that the term was at issue. See generally WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1328 (Fed. Cir. 2018) (“[The] Board is not bound to adopt either party’s preferred articulated construction of a disputed claim term.”). Case: 21-1851 Document: 57 Page: 9 Filed: 12/15/2022

PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 9

Unlike in Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 1261-63 (Fed. Cir. 2021), where we faulted the Board for failing to give notice before it ruled on an otherwise undis- puted claim construction issue that the Board had no brief- ing on, here Provisur’s position on simultaneity was fully heard. In its Patent Owner Responses to Weber’s petitions, Provisur set out its arguments for why simultaneity is re- quired. Provisur argued to the Board that “the claim[s] re- quire[] the end region to deposit ‘drafts’ into the ‘container portions’ at the same time,” J.A. 2024, 2098, and further that Weber’s references did not teach the “multi-fill” limi- tation because they did not (in Provisur’s view) disclose simultaneous deposits. Provisur cannot demonstrate lack of notice and opportunity to respond when its own briefing addresses the very issue on which it claims it was not heard. See Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016). Accord- ingly, we reject Provisur’s APA argument. 4 We affirm the Board’s construction of the “multi-fill” limitation and hold that the Board did not violate Provi- sur’s rights under the APA. Since Provisur does not con- tend that its patents are valid under the Board’s construction, we affirm the Board’s finding of unpatenta- bility of the claims at issue in Provisur’s appeal. B Even if we were to conclude that the Board’s construc- tion of the “multi-fill” limitation was incorrect, we would

4 Provisur also argues the Board violated the APA in crediting an anticipation argument under the guise of ob- viousness. This argument is meritless. That the Board found claims obvious even though Weber argued the multi- fill limitation is disclosed completely in individual pieces of prior art is consistent with an obviousness inquiry. Case: 21-1851 Document: 57 Page: 10 Filed: 12/15/2022

still reach the same result. The Board expressly analyzed Weber’s prior art combinations under Provisur’s preferred construction. The Board had substantial evidence to sup- port its findings that Weber’s combinations of prior art taught simultaneously depositing stacks. For the Honsberg-Hollymatic combination, the Board explained that Honsberg discloses simultaneous deposits. Specifically, Honsberg describes depositing multiple drafts into multiple containers in a single row. The Board further found that a subsequent piece of art, German patent appli- cation DE 4202915 A1, “suggests that Honsberg is capable of ‘multi-fill’ [i.e., multiple, simultaneous] deposition.” The Board additionally credited Weber’s extrinsic evidence sup- porting the view that an artisan of ordinary skill would rec- ognize that Honsberg could be used to simultaneously place drafts and that doing so would be more efficient than depositing drafts for a given row piece-by-piece. Based on this substantial evidence, the Board found that Honsberg teaches “that multiple drafts are deposited in a single with- drawal of the slide in the multi-laned apparatus.” The Board’s conclusions regarding the Weber466-Hol- lymatic combination were similar and equally supported by the record. The Board found that Webber446 disclosed or suggested simultaneous deposits, noting that Webber446 described placing portions (plural) into containers. The Board added that, based on the testimony of Weber’s expert as well as Weber466’s recitation of multiple lanes on the conveyor, a person of ordinary skill in the art would have used multiple rows to simultaneously deposit drafts to im- prove the rate of production. In sum, there was substantial evidence to support the Board’s findings that both Honsberg and Weber466 sug- gest simultaneously depositing multiple drafts into multi- ple containers in a row, rendering the claims at issue in Provisur’s appeal invalid as obvious even under Provisur’s Case: 21-1851 Document: 57 Page: 11 Filed: 12/15/2022

PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 11

preferred construction of the “multi-fill” limitation. Thus, even if the claim construction were erroneous (and we have found it was not), such error would be harmless. See In re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004) (explaining that Board errors not affecting outcome are harmless). III In its cross-appeal, Weber challenges the Board’s con- clusion that the “reverse fill” claims – that is, claims 5, 14, and 21 of the ’936 patent and claims 6 and 7 of the ’513 patent – were not proven unpatentable. These claims in- volve depositing drafts starting from a retracted position of the conveyer and then moving to an extended position. The Board concluded that Weber failed to show that a person of ordinary skill in the art would have been motivated to achieve this arrangement. The Board’s findings are sup- ported by substantial evidence. The Board heard testimony that “depositing food items in the advancing direction would double the number of steps necessary for deposition, adding needless complexity and increasing the likelihood of malfunction.” J.A. 43, 119 (citing J.A. 2960-61). The Board recognized that because of this increased complexity, a person of ordinary skill in the art would have lacked motivation to combine the refer- ences and modify them to obtain the reverse fill configura- tion. This testimony was substantial evidence for the Board’s conclusion. Weber counters that a skilled artisan would have been capable of reversing the order in which the rows are filled. Even if a person of skill would have this knowledge, it does not necessarily follow that such an artisan would have any motivation to combine the prior art in this manner. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Case: 21-1851 Document: 57 Page: 12 Filed: 12/15/2022

Weber also contends that the Board erred in failing to consider both the advantages and disadvantages of its pro- posed reverse fill modification. Weber misconstrues the record. The Board’s conclusion did not depend on a deter- mination that the reverse-fill configuration was not the best configuration. Rather, the Board concluded there was no motivation to achieve the limitation, a finding substan- tial evidence supports. Accordingly, we affirm the Board’s determination that claims 5, 14, and 21 of the ’936 patent and claims 6 and 7 of the ’513 patent have not been proven unpatentable. IV We have considered both parties’ remaining arguments and find they lack merit and do not require discussion. Thus, for the foregoing reasons, we affirm the Board’s de- cisions. AFFIRMED COSTS Each party to bear its own costs.