USPTO Director Vacates Food Slicer Holding

US Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB or Board) that found Weber, Inc. had shown by a preponderance of the evidence that certain claims of Provisur Technologies, Inc.’s patent were unpatentable.

The patent at issue, No. 8,408,109 B2, relates to a food slicing machine. Specifically, it covers:

A loaf feed apparatus for a food article slicing machine. The apparatus has at least a first conveyor driven by a hollow shaft and a second conveyor driven by a second shaft. The second shaft independently operates within said hollow shaft. The hollow shaft and the second shaft are driven by independent drive sources. The apparatus also includes at least one lower conveyor driven by a drive roller having an outer diameter and a recessed diameter where the drive belt is connected around the recessed diameter and the conveyor belt is connected around the outer diameter. The drive belt operates within an area defined by the first conveyor belt. The apparatus also has a loaf gate for separating a slicing station from the loaf feed apparatus.

The claimed benefit of the invention is that

[m]any different kinds of food articles or food products, such as food slabs, food bellies, or food loaves, are produced in a wide variety of shapes and sizes. There are meat loaves made from various meats, including ham, pork, beef, lamb, turkey, and fish. The meat in the food loaf may be in large pieces or may be thoroughly comminuted. These meat loaves come in different shapes (round, square, rectangular, oval, etc.) and in different lengths up to six feet (183 cm) or even longer. The cross-sectional sizes of the loaves are quite different; the maximum transverse dimension may be as small as 1.5 inches (4 cm) or as large as ten inches (25.4 cm). Loaves of cheese or other foods come in the same great ranges as to composition, shape, length, and transverse size.

Also, according to the patent application,

The combination provides food hygiene advantages by use of unibody construction with minimal penetrations, double sealed door closures, self-draining angled surfaces, the use hygienic, round, sealed adjustable legs, use an automatic debris or scrap removal conveyor, a hygienic configuration of a food article lift and sweep mechanism.

Provisur won a major patent infringement case against Weber in 2022 for willfully infringing multiple food slicer patents. In January 2023, the court doubled the jury’s damages award from $10.5 million in damages to $21 million noting that Weber’s “systemic misconduct transcended that of a garden-variety infringer.”

Weber filed a petition requesting inter partes review (IPR) of claims 1-17 of the patent.

Weber argued that the claims were unpatentable as obvious over several combinations of prior art references.

Provisur responded that Weber had failed to show an adequate motivation to combine those references. It introduced “contemporaneous documentary evidence that showed those of skill in the industry would not have combined the prior art.”

Specifically, Provisur argued that

[t]he evidence showed Petitioner’s proposed combination would have been viewed as a major hygiene risk,” and that “[h]ygiene was a significant consideration given the ’109 patent’s food slicing technology.

Also, Provisur introduced evidence that before the ‘109 patent, “no industry members had successfully developed the features embodied in the ’109 patent’s claims.”

In fact, said Provisur,

contemporaneous evidence further demonstrated that industry figures . . . believed that developing a machine with the features of the ’109 patent was technologically advanced . . . , difficult . . . and prohibited by cost.

It argued that this evidence supported its arguments that a person of ordinary skill in the art would not have been motivated to combine the references in the manner asserted by Weber.

A “person of ordinary skill in the art” (POSITA) is a hypothetical person having the relevant level of ordinary skill in the art covered by the patent – in this case, food technology.

A POSITA can also be referred to as a person

• Having ordinary skill in the art (PHOSITA).
• Of ordinary skill in the art (POSA).
• Skilled in the art.

A patent may not be granted if an invention is “obvious” to a POSITA.

As noted in the case of (Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007), in determining the POSITA's appropriate level of ordinary skill in the art, a fact-finder may consider:

• The inventor's educational level.
• Types of problems encountered in the art.
• Prior art solutions to those problems.
• Rapidity with which innovations are made in the art.
• Sophistication of the technology.
• Educational level of actors working in the field.

The POSITA’s skill level is relevant when:

• Construing patent claims
• Comparing a patent claim element to an accused product in an infringement analysis under the doctrine of equivalents
• Evaluating whether a pending or issued patent claim meets the written description, enablement, and definiteness requirements.

And, as in this case,

• Determining whether a pending or issued patent claim would have been obvious in view of the prior art.

Weber filed a motion to exclude this evidence, arguing that most of the exhibits cited in support of these arguments were inadmissible under the Federal Rules of Evidence.

The Board didn’t cite or discuss the challenged exhibits when it found that challenged claims were unpatentable except for claim 16.

Provisur filed a request for Director Review of the Board’s decision. It argued that:

[t]he Board’s unpatentability decision rests on legal error and abuse of discretion because it ignores direct evidence of patentability in the record as “moot”—even though the evidence was decidedly not moot.

In its obviousness finding, the Board acknowledged that Patent Owner had submitted contested affirmative evidence of non-obviousness, such as evidence of the many known challenges in making the claimed combination known in the industry around the time of invention. … The Board violated the APA and abused its discretion when it did not either consider the evidence on the merits or exclude the evidence.

The Director concluded that the Board failed to address the patent owner’s evidence supporting its arguments on motivation to combine prior art references.

She explained:

Although the Board properly considered most of the Patent Owner’s arguments regarding the sufficiency of the Petitioner’s motivation to combine showing, it failed to evaluate the Patent Owner’s disputed Exhibits for its arguments in this regard or in relation to the Petitioner’s related Motion to Exclude. Instead, the Board dismissed Petitioner’s Motion to Exclude as moot because the Board “did not rely on any of the contested evidence.”… That explanation did not adequately address the disputed evidence. The Board could not, as the statement suggests, reject Patent Owner’s arguments on motivation to combine without either considering the disputed evidence proffered by Patent Owner in support of those arguments or excluding that evidence. Having found the claims unpatentable as obvious, it was incumbent on the Board either to consider and address Patent Owner’s properly submitted evidence, or to exclude the exhibits based on Petitioner’s Motion to Exclude.

The Director ordered the Board to address these exhibits to determine whether they should be excluded or considered.