DCT

5:21-cv-06113

Provisur Tech Inc v. Weber Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:21-cv-06113, W.D. Mo., 06/23/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant Weber, Inc. is a Missouri corporation with its principal place of business in the district, and the German defendants placed infringing products into the U.S. stream of commerce with the expectation of purchase by consumers within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s high-speed industrial food slicers infringe patents related to independent multi-lane conveyor drives and automated food article loading systems.
  • Technical Context: The technology concerns industrial-scale machines that slice large food loaves, such as deli meats and cheeses, at high speeds for commercial packaging.
  • Key Procedural History: This is the third patent suit Plaintiff has filed against Defendants in this district. In a prior consolidated action (Provisur I & II), a jury found Defendants willfully infringed multiple Provisur patents, including U.S. Patent Nos. 10,625,436 and 10,639,812, which are re-asserted in this case against a newer product. The court in that prior action doubled the jury's $10.5 million damages award, finding Defendants' conduct was an "egregious case of misconduct beyond typical infringement." Plaintiff alleges the current suit against the weSLICE 9500 was filed at the court's invitation after Defendants' late disclosure of the product in the prior litigation. The '436 and '812 patents also survived an inter partes review challenge initiated by Weber.

Case Timeline

Date Event
2007-10-22 Priority Date for U.S. Patent No. 8,408,109
2010-05-01 Priority Date for U.S. Patent Nos. 10,625,436 and 10,639,812
2013-04-02 U.S. Patent No. 8,408,109 Issues
2014-03-mid Complaint alleges Defendants became aware of Plaintiff's independent drive technology
2015-04-20 Complaint alleges Defendants contacted Plaintiff to demand a "free license"
2019-02-xx Plaintiff files Provisur I lawsuit
2020-04-21 U.S. Patent No. 10,625,436 Issues
2020-05-05 U.S. Patent No. 10,639,812 Issues
2020-05-xx Plaintiff files Provisur II lawsuit
2021-09-21 Plaintiff files original complaint in the current action
2022-10-xx Jury trial in consolidated Provisur I & II takes place
2023-06-23 Plaintiff files First Amended Complaint

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

U.S. Patent No. 8,408,109: "Food Article Feed Apparatus for a Food Article Slicing Machine" (issued Apr. 2, 2013)

The Invention Explained

  • Problem Addressed: In high-volume slicing operations, machines must handle multiple food loaves simultaneously. A key challenge is feeding each loaf into the slicing blade at an independent rate to optimize slice weight, control, and overall product yield for each individual loaf (’109 Patent, col. 1:49-55).
  • The Patented Solution: The invention describes a feed mechanism for a slicing machine that uses two or more independently driven conveyors to move separate food articles. The solution is implemented using a concentric shaft design, where a hollow outer shaft drives a first conveyor and a solid inner shaft, driven by a separate motor, passes through the hollow shaft to drive a second conveyor. This allows for independent control of feed rates for adjacent food loaves in a compact mechanical arrangement (’109 Patent, Abstract; col. 5:39-49).
  • Technical Importance: This independent control mechanism allows food processors to achieve better weight control and yield when slicing multiple loaves at once, which is a key performance metric in the industry (Compl. ¶131).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶132).
  • Key elements of independent claim 1 include:
    • A first conveyor with an endless belt for moving a first food article.
    • A second conveyor with an endless belt for moving a second food article.
    • The first conveyor is driven by the rotation of a hollow first shaft.
    • The second conveyor is driven by the rotation of a second shaft.
    • The second shaft operates independently and concentrically within the hollow first shaft.
    • A first motor drives the hollow first shaft, and a second motor drives the second shaft.

U.S. Patent No. 10,625,436: "High Speed Slicing Machine" (issued Apr. 21, 2020)

The Invention Explained

  • Problem Addressed: The patent background describes inefficiencies in prior art slicing machines, particularly during the "reload cycle," where spent food loaves are replaced with new ones. A significant time loss can occur when loading new loaves, and there is a need for an automated system that can handle multiple loaves independently and hygienically while minimizing downtime (’436 Patent, col. 1:11-20, col. 2:36-41).
  • The Patented Solution: The patent describes an integrated high-speed slicing system. The system features an automated loading apparatus with a lift tray that receives food articles and raises them into the feed path without needing lateral shifting. An overhead conveyor system uses independently driven belts, each with its own gripper, to move the food articles toward the slicing blade. A key component is a "stop gate" that not only holds the food articles in position during loading but also functions as a door to allow for the automated removal of unusable end portions of the loaves (’436 Patent, Abstract; col. 2:51-64).
  • Technical Importance: This automated, in-line loading and end-portion removal system is designed to improve productivity, operational efficiency, and food hygiene in industrial slicing operations (Compl. ¶154).

Key Claims at a Glance

  • The complaint asserts at least claims 9, 10, 11, 12, and 16, with claim 9 being independent (Compl. ¶158).
  • Key elements of independent claim 9 include:
    • A slicing station with a knife blade.
    • A food article loading apparatus with a lift tray assembly movable between a staging position and an elevated position within a food article feed path.
    • A food article feed apparatus positioned over the loading apparatus, featuring a conveyor assembly with independently driven endless conveyor belts.
    • Each conveyor belt cooperates with an independently driven and controlled food article gripper.
    • The conveyor assembly is an upper conveyor assembly.
    • A food article stop gate, located upstream of the slicing station, that supports the food articles during loading and also serves as a door for removing food article end portions.

U.S. Patent No. 10,639,812: "High Speed Slicing Machine" (issued May 5, 2020)

  • Technology Synopsis: This patent is from the same family as the ’436 Patent and addresses similar technical challenges. It describes a high-speed slicing machine that can slice multiple food articles at independent rates to achieve optimal weight control and yield, with a focus on improving productivity and operation (Compl. ¶155).
  • Asserted Claims: At least claims 1, 7, and 8, with claim 1 being independent (Compl. ¶159).
  • Accused Features: The complaint accuses the Weber weSLICE 9500 of infringing by incorporating a slicing station, a food article loading apparatus with a lift tray, an overhead feed apparatus with independently driven conveyor belts and grippers, and a food article stop gate (Compl. ¶160).

III. The Accused Instrumentality

Product Identification

  • The complaint names two groups of accused products:
    1. "Accused Slicer Products" (infringing the ’109 Patent): Weber Slicer S6, Weber Slicer 904-02, Weber Slicer 905, Weber Slicer 906, and the Weber weSLICE 9500 (Compl. ¶132 & fn. 1).
    2. "Accused weSLICE Slicer Products" (infringing the ’436 and ’812 Patents): Weber Slicer weSLICE 9500 and later versions (Compl. ¶158).

Functionality and Market Context

  • The accused products are high-speed, industrial-scale food slicing machines sold to food processors in North America (Compl. ¶¶38-39). The complaint alleges these machines incorporate the patented technologies to achieve independent feeding of multiple food loaves. A diagram from an accused product's operating manual shows a "separate drive for each track," illustrating the independent drive functionality (Compl. ¶135, p. 30). The complaint further alleges that the weSLICE 9500 includes an automated food article loading apparatus, feed apparatus, gripper, slicing station, and stop gate (Compl. ¶¶160-161).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,408,109 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first conveyor having at least one first endless belt that moves to provide a first conveying surface... for moving a first food article toward a cutting plane The accused slicers have a first conveyor with an endless belt to move a first food loaf toward the slicing blade. ¶133 col. 5:29-33
a second conveyor having at least one second endless belt that moves to provide a second conveying surface... for moving a second food article toward the cutting plane The accused slicers have a second conveyor with an endless belt to move an adjacent second food loaf toward the slicing blade. ¶133 col. 5:34-38
said first conveyor driven by rotation of a hollow first shaft The first conveyor is allegedly driven by a hollow shaft. ¶133 col. 5:39-40
said second conveyor driven by rotation of a second shaft The second conveyor is allegedly driven by a second, separate shaft. ¶133 col. 5:41-42
said second shaft independently operating concentrically within said hollow first shaft The second shaft allegedly operates independently inside the hollow first shaft. A diagram from a product manual shows "a separate drive for each track" (Compl. ¶135, p. 30). ¶133 col. 5:43-45
a first motor driving the hollow first shaft into rotation A first motor allegedly drives the first conveyor's hollow shaft. ¶133 col. 5:46-47
a second motor driving the second shaft into rotation A second motor allegedly drives the second conveyor's shaft independently of the first. ¶133 col. 5:48-49

Identified Points of Contention (’109 Patent):

  • Structural Questions: The complaint alleges the presence of concentric, independently driven shafts. A central technical question for discovery will be to determine the precise mechanical structure of the accused drive system and compare it to the "hollow first shaft" and concentric "second shaft" limitations of claim 1.
  • Scope Questions: The interpretation of "independently operating" may be a point of contention. The question will be what degree of mechanical and electrical separation is required by the claim language and specification to meet this limitation.

U.S. Patent No. 10,625,436 Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
a slicing station comprising a knife blade and a knife blade drive driving the blade along a cutting path in a cutting plane The accused weSLICE 9500 contains a slicing station with a knife blade for slicing food articles. ¶160 col. 11:30-33
a food article loading apparatus including a lift tray assembly moveable between a staging position and an elevated position... The accused product allegedly has a food article loading apparatus with a lift tray that moves food articles into the feed path. Images from Defendant's website show this loading process in action (Compl. ¶161, p. 36). ¶160 col. 11:34-39
a food article feed apparatus disposed over said food article loading apparatus and having a conveyor assembly with independently driven endless conveyor belts The accused product allegedly has an overhead feed apparatus with independently driven conveyor belts to move the food articles. ¶160 col. 11:40-44
wherein each of the conveyor belts is used in cooperation with an independently driven and controlled food article gripper for moving a food article along the food article feed path Each conveyor belt on the accused product allegedly works with an independent gripper to move a food article. ¶160 col. 12:1-5
wherein the conveyor assembly is an upper conveyor assembly The accused product's conveyor assembly is allegedly an upper, or overhead, assembly. ¶160 col. 12:6-7
a food article stop gate... wherein the food article stop gate also serves as a door for the removal of food article end portions The accused product allegedly includes a food article stop gate that both supports food articles during loading and functions as a door to remove end portions. ¶160 col. 12:8-19

Identified Points of Contention (’436 Patent):

  • Functional Questions: A principal question will be whether the accused product's "stop gate" performs the dual functions required by the claim: (1) supporting food articles during loading and (2) serving as a "door for the removal of food article end portions." Evidence of how the accused machine handles and ejects loaf ends will be critical.
  • System Integration Questions: As this is a system claim, infringement requires the presence and interaction of all listed components (loader, feeder, gripper, gate, slicer). The analysis will focus on whether the accused weSLICE 9500 integrates all of these elements in the manner recited by the claim.

V. Key Claim Terms for Construction

"independently operating concentrically" (’109 Patent, Claim 1)

  • Context and Importance: This term is the central technical concept of the ’109 patent's asserted claim. The definition will determine whether the accused drive mechanism, which allegedly uses "a separate drive for each track," falls within the scope of the claim.
  • Evidence for a Broader Interpretation: The specification describes the motors as being independently controlled to achieve different feed rates, suggesting the primary importance is functional independence rather than a specific degree of mechanical separation (’109 Patent, col. 2:23-27).
  • Evidence for a Narrower Interpretation: The claim language is structurally specific, requiring one shaft to be "within" the other. The figures and detailed description of the preferred embodiment show a distinct mechanical arrangement of one shaft passing through a hollow one, which could be argued to limit the scope to similar physical configurations (’109 Patent, Fig. 21; col. 7:39-50).

"food article stop gate... also serves as a door for the removal of food article end portions" (’436 Patent, Claim 9)

  • Context and Importance: This limitation requires a single component to perform two distinct functions. Practitioners may focus on this term because if the accused product uses separate components for stopping food articles and for removing end portions, it may not infringe this element.
  • Evidence for a Broader Interpretation: The patent describes the gate as "operable to be used as a gate, to be used as a floor... and to be used as a trap door," suggesting the term encompasses a versatile component that can be moved into different positions to achieve these functions, rather than requiring it to perform both simultaneously (’436 Patent, col. 10:57-62).
  • Evidence for a Narrower Interpretation: The specific language "also serves as a door" could be construed to require that the gate structure itself is what opens for removal. An embodiment shown in Figure 13C depicts the gate (2020) pivoting open to drop an end portion onto a scrap conveyor (122), which may be used to argue that this specific mode of operation defines the term's scope (’436 Patent, Fig. 13C).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges Defendants induce infringement by instructing customers on how to install and operate the accused slicers as claimed. This is allegedly done through product documentation, in-person and remote customer support, and published online tutorials and videos (Compl. ¶¶137, 163).

Willful Infringement

  • The complaint alleges willful infringement based on Defendants' alleged pre-suit knowledge of the patents and the infringing nature of their activities. The asserted bases for willfulness are extensive and include the prior jury verdict of willful infringement against Defendants for the same technology in different products ('436 and '812 patents), Defendants' alleged systematic monitoring of Plaintiff's patent portfolio, alleged intentional copying of Plaintiff's technology, and knowledge gained from related patent litigation in Germany (Compl. ¶¶33, 47-48, 60-62, 141, 167).

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

  • A central issue will be one of technical continuation and estoppel: Given the prior jury verdict that older Weber products willfully infringed the '436 and '812 patents, a key question for the court will be whether the technology in the newer weSLICE 9500 is materially unchanged, potentially subjecting Defendants to issue preclusion on questions of infringement and validity for those patents.
  • A key question for the '109 patent will be one of structural equivalence: Does the accused products' multi-lane drive mechanism, once fully revealed in discovery, embody the specific concentric shaft-within-a-hollow-shaft architecture required by Claim 1, or does it achieve independent drive functionality through a means that is colorably different?
  • A dispositive issue for the '436 and '812 patent claims may be one of dual functionality: Does the accused weSLICE 9500's stop gate perform both the claimed function of supporting food articles during loading and the function of serving as a "door for the removal of food article end portions," or does it use a separate mechanism for end-portion removal that falls outside the claim's scope?