Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2019-01462
• Patent #: 7,065,936
• Filed: August 9, 2019
• Petitioner(s): Weber, Inc.
• Patent Owner(s): Provisur Technologies, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Apparatus for Depositing Sliced Food into Containers
• Brief Description: The ’936 patent discloses an apparatus for depositing food product "drafts" into containers. Its central feature is a shuttle conveyor with a conveying surface that retracts and extends to deposit rows of drafts sequentially into a first and then a second row of pockets formed in a web of film, all while the web itself remains stationary at a fill station.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6, 10, and 13-14 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 argued Honsberg disclosed the core system: a food depositing apparatus with a movable slide and looped conveyor belt (the "shuttle conveyor") that retracts to deposit sliced food into receptacles formed in a "deep drawn sheet" (the "web of film"). Honsberg's system taught filling containers while the web is stationary but was primarily directed to filling a single row. Petitioner contended Hollymatic remedied this by teaching a similar retractable sled conveyor designed to deposit food into multiple, longitudinally displaced rows of containers. The combination of Honsberg’s stationary-web filling system with Hollymatic’s explicit teaching of sequential, multi-row depositing was alleged to render all limitations of independent claims 1 and 10 obvious.
- **Motivation to Combine:** A POSITA would have been motivated to modify Honsberg’s system with Hollymatic’s multi-row capability to increase efficiency and throughput. The petition asserted that the art understood that a packaging line's "dwell time"—the period when the container web is stopped for forming—was a source of inefficiency. A POSITA would have sought to maximize filling operations during this fixed period to increase production rates. Furthermore, a POSITA would have recognized the cost-effectiveness of Honsberg’s method of forming containers from a web of film over using pre-formed trays. Combining this cost-effective container source with Hollymatic’s known method for high-speed, multi-row filling represented a logical path to creating a more commercially competitive packaging system.
- **Expectation of Success:** Petitioner asserted a high expectation of success because both references employed predictable withdrawing conveyor mechanisms. Implementing a second conveyor withdrawal in the Honsberg system to fill a second row, per Hollymatic’s teaching, was presented as a straightforward modification involving only routine mechanical skill.

Ground 2: Claims 7-9 and 15-17 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 augmented the primary combination to address dependent claims requiring integrated container-forming and sealing stations. Petitioner argued Mello disclosed a complete form-fill-seal packaging line teaching a container forming station upstream of a loading station and a sealing station downstream where lids are applied. Mello’s apparatus explicitly forms containers from a web and seals them in arrays, directly mapping onto the limitations of claims requiring these features.
- **Motivation to Combine:** A POSITA would combine Mello's features with the base Honsberg/Hollymatic system to create a fully integrated and automated packaging line. Incorporating an upstream forming station is a logical preface to filling, and sealing filled containers is a necessary and conventional final step to prevent contamination, ensure product safety, and prepare the package for distribution. Mello’s system, designed to seal "two rows of products" in a single operation, was particularly well-suited to the multi-row filling system of the primary combination, as it would maintain the efficiency gains achieved by filling multiple rows simultaneously.
- **Expectation of Success:** Success would be highly predictable. Integrating standard upstream and downstream processing modules is a common task in designing packaging lines. Mello's system was already configured to operate with a web of material and an automatic loading system, making its components directly compatible with the Honsberg/Hollymatic combination.

• Additional Grounds: Petitioner asserted further obviousness challenges for the remaining claims based on adding conventional packaging line features. Ground 3 added Mahaffy535 (Patent 4,709,535) for its teachings of a tamping apparatus with a "retractable pusher arm" to press food products into containers, arguing a POSITA would add this to reduce voids and present a more tightly packed product. Ground 4 added Scheflow (Patent 4,685,364) for a "rotatable slicing blade" and Sandberg (Patent 5,810,149) for a "row staging conveyor," arguing a POSITA would integrate these to create a seamless slicing, staging, and packaging line to streamline production. Ground 5 presented an alternative primary challenge using Weber446 (WO 02/22446) in place of Honsberg, arguing it also taught a suitable withdrawing conveyor system that could be combined with Hollymatic.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper. It was asserted that the core prior art references central to the petition—specifically Honsberg, Hollymatic, Weber446, and Scheflow—were not cited or considered by the Examiner during the original prosecution of the ’936 patent.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-21 of Patent 7,065,936 as unpatentable.