DCT

5:19-cv-06021

Provisur Technologies, Inc. v. Weber, Inc.

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:19-cv-06021, W.D. Mo., 04/26/2019
  • Venue Allegations: Venue is alleged to be proper in the Western District of Missouri because Defendants Weber, Inc. and Textor, Inc. are incorporated in Missouri, maintain their principal places of business within the district, and have committed alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ commercial food slicing machines and related automated systems infringe seven patents related to food processing automation, including robotic product handling, sheet interleaving, packaging, optical grading, and yield monitoring.
  • Technical Context: The dispute centers on high-speed, automated food processing equipment, a field where technological innovations are critical for improving production efficiency, product consistency, and overall yield in the commercial food industry.
  • Key Procedural History: The complaint alleges that Defendants were aware of several of the patents-in-suit prior to the litigation, having cited them or their underlying applications as prior art in Defendants' own patent applications. The complaint also references a history of Defendants instituting "numerous challenges to Provisur patents throughout the world." These allegations may be relevant to the issue of willful infringement.

Case Timeline

Date Event
1999-10-12 U.S. Patent No. 6,320,141 Priority Date
2001-08-01 U.S. Patent No. 6,669,005 Priority Date
2001-11-20 U.S. Patent No. 6,320,141 Issues
2002-06-25 U.S. Patent No. 6,997,089 Priority Date
2002-12-18 U.S. Patent No. 7,065,936 & 7,533,513 Priority Date
2003-12-30 U.S. Patent No. 6,669,005 Issues
2005-10-25 U.S. Patent No. 9,399,531 Priority Date
2006-02-14 U.S. Patent No. 6,997,089 Issues
2006-06-27 U.S. Patent No. 7,065,936 Issues
2008-10-27 U.S. Patent No. 8,322,537 Priority Date
2009-05-19 U.S. Patent No. 7,533,513 Issues
2012-12-04 U.S. Patent No. 8,322,537 Issues
2016-07-26 U.S. Patent No. 9,399,531 Issues
2019-04-26 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,322,537 - "Food Product Vacancy Reduction System"

Issued December 4, 2012

The Invention Explained

  • Problem Addressed: In automated food production lines, when products are removed for quality control, they leave empty spaces ("vacancies") on the main conveyor, which reduces the efficiency of downstream equipment like packaging machines (Compl. ¶49; ’537 Patent, col. 2:29-39).
  • The Patented Solution: The patent describes a system that uses a "vacancy detector" to identify these empty spots on the main conveyor. A controller then directs a robot to pick up a replacement food product from a dedicated "food product parking station" and place it into the vacant position, thereby maintaining a continuous flow of products ('537 Patent, col. 2:43-56).
  • Technical Importance: This automated vacancy-filling system is designed to increase the overall throughput and efficiency of a production line by ensuring downstream machinery operates without interruption (Compl. ¶49).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶50).
  • Essential elements of claim 1 include:
    • A main conveyor for moving food products in rows and columns.
    • A food product parking station for holding one or more food products.
    • A vacancy detector to identify vacant positions on the main conveyor.
    • A robot with a working range between the parking station and the main conveyor.
    • A controller connected to the detector and robot, with instructions to move a product from the parking station to a vacant position.
    • The robot being configured to carry and deposit the food product.

U.S. Patent No. 9,399,531 - "Sheet Interleaver For Slicing Apparatus"

Issued July 26, 2016

The Invention Explained

  • Problem Addressed: Reliably and accurately placing interleaving sheets, such as paper or film, between slices of food product is a significant challenge in high-speed slicing operations (Compl. ¶63; ’531 Patent, col. 2:3-6).
  • The Patented Solution: The invention proposes a two-stage web handling system. A "drawing station" pulls web material from a supply roll, and a separate "feed station" receives it and drives it toward the slicing blade. The controller manages the differential speeds of these two stations to create and maintain a controlled "slackened length" of material between them. A non-contact sensor monitors this slack (as a proxy for tension) and provides feedback to the controller, which adjusts the speeds to ensure consistent web feeding (’531 Patent, col. 2:10-38).
  • Technical Importance: This active tension control system improves the reliability of placing interleaving sheets, which is critical for product quality and packaging in high-volume food processing (Compl. ¶63).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶64).
  • Essential elements of claim 1 include:
    • A supply of web material.
    • A drawing station with a first driver to draw material from the supply.
    • A feed station with a second driver to receive and drive the material into a slicing plane.
    • A controller to drive the material at select differential speeds to control tension between the stations.
    • A non-contact sensor that senses tension between the stations and communicates with the controller to adjust the differential speed and maintain tension within a pre-selected range.

U.S. Patent No. 7,065,936 - "Fill and Packaging Apparatus"

Issued June 27, 2006

  • Technology Synopsis: The patent describes an apparatus for loading food product drafts into packages arranged in rows on a web of film. The invention utilizes a "shuttle conveyor" with a retractable and extendable surface that moves over a stationary web of packages, depositing drafts into a first row of containers before retracting or extending to deposit drafts into a second row (Compl. ¶¶77, 80).
  • Asserted Claims: At least independent claim 1 (Compl. ¶78).
  • Accused Features: Defendants' "SmartLoader" products are alleged to infringe by using a shuttle conveyor with a retractable surface to deposit food products into rows of containers at a fill station (Compl. ¶¶78, 80).

U.S. Patent No. 7,533,513 - "Fill and Packaging Method"

Issued May 19, 2009

  • Technology Synopsis: The patent claims a method of filling packages that mirrors the functionality of the apparatus in the ’936 Patent. The method involves providing rows of containers at a fill station and using a conveyor with a retractable and extendable surface to deposit food drafts into a first row and then repositioning to deposit drafts into a second row (Compl. ¶¶90, 93).
  • Asserted Claims: At least independent claim 1 (Compl. ¶91).
  • Accused Features: Defendants' "SmartLoader" products are accused of performing the patented filling and packaging method (Compl. ¶91).

U.S. Patent No. 6,669,005 - "Servo-Controlled Distribution Conveyor"

Issued December 30, 2003

  • Technology Synopsis: The patent discloses a feed conveyor system with an endless circulating belt that can be extended and retracted to position food products onto a downstream conveyor. The system employs a first electric motor to control the longitudinal position of the conveyor's end and a second electric motor to control the belt's circulation speed, with a controller to precisely coordinate their movements (Compl. ¶¶103, 106).
  • Asserted Claims: At least independent claim 1 (Compl. ¶104).
  • Accused Features: Defendants' "SmartLoader" products are alleged to embody this servo-controlled conveyor technology (Compl. ¶¶104, 106).

U.S. Patent No. 6,997,089 - "Optical Grading System For Slicer Apparatus"

Issued February 14, 2006

  • Technology Synopsis: The patent describes a system for optically grading sliced food products. An image capturing device generates a pixel-by-pixel image of a slice. A control processes this data to classify pixels as "fat or lean," sums the fat pixels, compares the sum to a predetermined limit, and directs a classifying conveyor to sort the slice accordingly (Compl. ¶¶116, 118).
  • Asserted Claims: At least independent claim 9 (Compl. ¶117).
  • Accused Features: Defendants' slicers that incorporate "optical grading systems" are accused of infringing this patent (Compl. ¶¶117-118). An image from Weber's website depicts the "702 Bacon Grading System" with overlays showing "CONTOUR" and "FAT" analysis (Compl. p. 31).

U.S. Patent No. 6,320,141 - "Yield Monitoring System for a Slicer Apparatus"

Issued November 20, 2001

  • Technology Synopsis: The patent discloses an automated system for monitoring the overall yield of a slicing apparatus. The system integrates at least one product input scale, a slicing mechanism, and at least one product output scale. A "yield monitor" electronically receives weight data from the scales to calculate and display system yield data to a user (Compl. ¶¶129, 131). An image provided in the complaint shows a user interface with yield data from an accused system (Compl. p. 35).
  • Asserted Claims: At least independent claim 20 (Compl. ¶130).
  • Accused Features: Defendants' "Accused Yield Monitoring Products," such as the CPS 200, are alleged to contain the claimed system components for monitoring yield (Compl. ¶¶130-131).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies several categories of accused products:
    • Robotics: Weber PickRobot (including Single, Double, Triple, Quadruple) and Weber SmartPicker products (Compl. ¶50).
    • Interleavers: Weber slicers S6, 905, 804, 604, 405, 305; Textor slicers TS500, TS 700; and the Textor TI600 stand-alone interleaver (Compl. ¶64).
    • Loaders/Conveyors: Defendants' "SmartLoader" products from both Weber and Textor (Compl. ¶78).
    • Optical Graders: Slicers incorporating optical grading systems, such as those advertised with the Weber Slicer 702 (Compl. ¶¶117, 119).
    • Yield Monitors: Weighers designed for yield monitoring systems, such as the CPS 200 (Compl. ¶130).

Functionality and Market Context

  • The complaint alleges these products are technologically advanced machines and systems sold for use in commercial food processing (Compl. ¶1). They are marketed as providing automated solutions for various stages of the production line, from slicing and grading to loading and packaging (Compl. ¶¶50, 65, 79, 117, 130). The complaint alleges that the Weber and Textor brands are represented by a unified sales force and that some products, like the "SmartLoader," are marketed under both brands with similar descriptions (Compl. ¶¶20, 22, 79). An image from a Weber website shows a Weber SmartPicker robot arm positioned over a conveyor of sliced food products (Compl. p. 12). Another image shows a Textor TI600 interleaver feeding paper from a roll (Compl. p. 16).

IV. Analysis of Infringement Allegations

'537 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a main conveyor configured to move food products in a conveying direction in rows and at least two columns along the conveying direction The accused products include a main conveyor that moves food products in rows and columns. ¶51 col. 2:45-48
a food product parking station configured to holding one or more food products The accused products include a food product parking station for holding one or more food products. ¶51 col. 2:49-50
a vacancy detector configured to detect a vacant food product position within the rows and at the least two columns on the main conveyor The accused products include a vacancy detector that detects vacant food product positions on the main conveyor. ¶51 col. 2:50-52
a robot operated above the main conveyor having a working range for moving between the parking station and the at least two columns on the main conveyor The accused products include a robot operating above the main conveyor with a working range between the parking station and the conveyor columns. ¶51 col. 2:53-56
a controller signal-connected to the vacancy detector... and... to the robot and having control instructions for instructing the robot to move... food products from the... parking station to the vacant... position The accused products include a controller connected to the vacancy detector and robot, which receives a signal indicating a vacancy and instructs the robot to move a food product from the parking station to fill it. ¶51 col. 2:56-65
said robot configured to carry a food product from the parking station and deposit the food product into the vacant food product position The robot in the accused products is configured to carry a food product from the parking station and deposit it into the identified vacant position. ¶51 col. 2:65-67

Identified Points of Contention

  • Scope Questions: A central question may be the construction of the term "food product parking station". The dispute could turn on whether the accused products contain a structure that meets the specific definition of a "parking station" as contemplated by the patent, or if they use a more general buffering or alternative conveying system that falls outside the claim scope.
  • Technical Questions: The complaint alleges the presence of a "vacancy detector" and a "controller" with specific instructional logic. A key factual question will be what evidence demonstrates that the accused systems' sensors and control software perform the precise functions of detecting a vacant position and commanding the robot to fill that specific vacancy, as required by the claim.

'531 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a supply of web material The accused products include a supply of web material for interleaving. ¶66 col. 3:5-6
a drawing station having a first driver for drawing web material from said supply The accused products have a drawing station with a first driver to draw web material from the supply. ¶66 col. 3:6-8
a feed station having a second driver for receiving web material from said drawing station and driving said web material through a cutting nip into said slicing plane The accused products have a feed station with a second driver that receives material from the drawing station and drives it into the slicing plane. ¶66 col. 3:9-12
a controller in signal-communication with said first and second drivers to drive web material at select differential speeds... such that tension of the web material between said... stations is controlled The accused products have a controller that communicates with the first and second drivers to operate them at different speeds, thereby controlling the tension of the web material between them. ¶66 col. 3:15-20
a non-contact sensor that senses tension of web material... and is in signal-communication with said controller to adjust the differential speed... to maintain said tension within a pre-selected range The accused products have a non-contact sensor that senses web material tension between the stations and communicates with the controller to adjust the driver speeds to maintain a desired tension. ¶66 col. 3:20-26

Identified Points of Contention

  • Scope Questions: The construction of the phrase "senses tension" will be critical. The question is whether a sensor that measures the physical size or position of a slackened loop of material, as is common in such systems, meets the claim limitation of "sensing tension," which is a measure of force.
  • Technical Questions: What evidence does the complaint provide that the accused products' controller uses feedback from the sensor to "adjust the differential speed" for the explicit purpose of maintaining tension "within a pre-selected range"? The analysis may focus on the actual control logic and operational capabilities of the accused systems.

V. Key Claim Terms for Construction

For the ’537 Patent

  • The Term: "food product parking station"
  • Context and Importance: This term appears to describe a core architectural component of the claimed system. Infringement requires the accused products to have this specific element. Practitioners may focus on this term because the Defendants could argue their systems use a different mechanism, such as a simple buffer conveyor, that does not meet the specific structural or functional requirements of a "parking station" as disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes it as a station "configured to holding one or more food products" (’537 Patent, col. 2:49-50), which is a general functional description that could encompass various types of holding areas.
    • Evidence for a Narrower Interpretation: The patent figures (e.g., Fig. 4, element 140) depict the parking station as a distinct area, potentially separate from the main production flow, where products are held in reserve. This could support an argument that the term requires a dedicated, offline holding area rather than an integrated part of another conveyor.

For the ’531 Patent

  • The Term: "a non-contact sensor that senses tension"
  • Context and Importance: This limitation defines the feedback mechanism for the entire control system. The infringement case for this patent may turn on whether the accused sensor, which likely measures the physical size of a material loop, can be said to "sense tension." Practitioners may focus on this term because it creates a potential mismatch between the claim language (sensing a force) and the likely operation of the accused product (sensing a position).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses that the sensor can be of various types, including "an ultrasonic sensor, an optical sensor, such as a laser or photoeye" (’531 Patent, col. 8:60-62). These sensors typically measure distance or position, suggesting that the patentee contemplated using position-sensing as a proxy for tension-sensing.
    • Evidence for a Narrower Interpretation: The claim language explicitly requires that the sensor "senses tension." An argument could be made that if the inventor intended to claim a system that merely senses the position of a loop, the claim would have been drafted that way. The choice of the specific word "tension" may imply a requirement to measure force, either directly or through a very close, calibrated proxy.

VI. Other Allegations

Indirect Infringement

  • For all asserted patents, the complaint alleges induced infringement. The basis for these allegations is that Defendants provide customers with product documentation, in-person and remote support, tutorials, and product videos on their websites and YouTube channels, which allegedly instruct users on how to operate the accused products in an infringing manner (Compl. ¶¶ 54, 69, 83, 96, 109, 121, 135).

Willful Infringement

  • The complaint alleges willful infringement for all asserted patents. The allegations are based on Defendants' alleged pre-suit knowledge of the patents. Specifically, the complaint states that for several of the patents-in-suit (e.g., the ’537, ’531, and ’089 patents), Defendants had cited the patent or its parent application as prior art in their own patent applications years before the complaint was filed (Compl. ¶¶ 56, 70, 122). The complaint further alleges that Defendants have engaged in "extensive monitoring of Provisur's food slicing business, products, designs and patents" (Compl. ¶¶ 57, 71, 84).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can patent terms describing specific system components (e.g., "food product parking station", a sensor that "senses tension") be construed to cover the corresponding features in the accused systems, which may operate on similar principles but differ in their specific implementation or method of measurement?
  • A key evidentiary question will be one of functional operation: what technical evidence will be presented to demonstrate that the accused systems, particularly their software and control logic, perform the specific, multi-step functions required by the asserted claims, moving beyond surface-level mechanical similarity to prove an infringing mode of operation?
  • A critical issue for damages will be willfulness: given the specific allegations that Defendants were aware of several of the asserted patents for years before the suit by virtue of citing them as prior art, the case will likely involve a detailed inquiry into whether the alleged infringement, if found, was willful and deliberate.