Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2019-01461
• Patent #: 7,533,513
• Filed: August 9, 2019
• Petitioner(s): Weber, Inc.
• Patent Owner(s): Provisur Technologies, Inc.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method and Apparatus for Filling Containers
• Brief Description: The ’513 patent discloses a method for depositing food products, such as sliced drafts, into containers arranged in multiple rows. The method uses a shuttle conveyor with a retractable conveying surface to fill a first row and then a second row of containers while the containers remain stationary.

3. Grounds for Unpatentability

Ground 1: Obviousness over Honsberg and Hollymatic - Claims 1, 4, 6, and 12 are obvious over Honsberg in view of Hollymatic.

• Prior Art Relied Upon: Honsberg (Patent 5,078,259) and Hollymatic (European Application # 0 104 142 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Honsberg taught a food packaging machine with a retractable "withdraw conveyor" that deposits sliced food into a single row of stationary containers. Hollymatic taught a similar withdrawing conveyor system but specifically disclosed modifying the withdrawal motion to deposit products into a first position and then a second, spaced-apart position, thereby filling two adjacent rows of containers. Petitioner argued the combination of Honsberg’s basic system with Hollymatic’s multi-row filling technique rendered the limitations of independent claim 1 obvious. Dependent claim 12, requiring the containers to be stationary during filling, was explicitly taught by both Honsberg and Hollymatic.
  • Motivation to Combine: A POSITA would combine these references to improve efficiency. Packaging lines often have a "dwell time" when containers are stationary for forming. A POSITA would be motivated to use this dwell time to fill as many containers as possible, and Hollymatic’s method of filling a second row with a further conveyor withdrawal provided a known method to achieve this increased throughput.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the modification was a simple mechanical adjustment. Implementing a second, further withdrawal of the conveyor as taught by Hollymatic into Honsberg’s system required only routine skill.

Ground 2: Obviousness over Honsberg, Hollymatic, and Mello - Claims 5 and 7-11 are obvious over Honsberg, Hollymatic, and Mello.

• Prior Art Relied Upon: Honsberg (Patent 5,078,259), Hollymatic (European Application # 0 104 142 A2), and Mello (Patent 5,054,266).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Mello to the Honsberg/Hollymatic combination to address dependent claims requiring upstream container forming and downstream container sealing. Mello disclosed a complete packaging machine with a station for forming containers from a web of film, a loading station, and a downstream station for sealing the filled containers with a lid. Petitioner argued that adding these conventional, well-known packaging steps from Mello to the core depositing method of Honsberg and Hollymatic was obvious.
  • Motivation to Combine: The motivation was to create a fully integrated and automated form-fill-seal packaging line. Sealing is a necessary step to protect food products, and forming containers from a web, as taught by Mello, was known to be more cost-effective than using pre-formed trays. A POSITA would logically incorporate these upstream and downstream processing steps into the filling system to achieve a complete, efficient process.
  • Expectation of Success: Success was expected because Mello’s system was designed to operate with an automatic loading mechanism. Integrating the Honsberg/Hollymatic conveyor system as the loading mechanism was a predictable combination of known systems for their intended purposes.

Ground 3: Obviousness over Weber446 and Hollymatic - Claims 1, 4, 6, and 12 are obvious over Weber446 in view of Hollymatic.

• Prior Art Relied Upon: Weber446 (WO 02/22446) and Hollymatic (European Application # 0 104 142 A2).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to the Honsberg-based combination. Weber446 disclosed an inline transfer unit with a retractable belt for depositing sliced food portions into product receivers on a packaging film. Petitioner argued Weber446 served as a suitable base system, similar to Honsberg. As in Ground 1, Hollymatic was added to provide the teaching of a double-withdraw motion to fill a second row of containers.
  • Motivation to Combine: The motivation was identical to that of Ground 1: to increase the rate of production by filling multiple rows of containers during the machine’s dwell time. A POSITA would seek to modify Weber446’s single-row deposit system with Hollymatic’s known multi-row technique to improve throughput.
  • Expectation of Success: Success was reasonably expected as Weber446’s system already included a single withdrawal mechanism. The modification to implement a second withdrawal to fill another row of containers, as taught by Hollymatic, was argued to be a straightforward and predictable extension of the existing system's function.

• Additional Grounds: Petitioner asserted further obviousness challenges for claim 2 over Honsberg, Hollymatic, and Mahaffy535 (adding a tamping step), and for claim 3 over Honsberg, Hollymatic, Mahaffy535, Scheflow, and Sandberg (adding slicing and staging steps).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. While some secondary references were cited on the face of the ’513 patent, the primary prior art combinations relied upon in the petition were never considered or applied by the Examiner during prosecution. Specifically, Petitioner asserted that the core references of Honsberg, Hollymatic, and Weber446, which form the basis of the independent claim challenges, were not previously applied, thus presenting new questions of patentability.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-12 of Patent 7,533,513 as unpatentable.