Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2019-01463
• Patent #: 6,669,005
• Filed: August 9, 2019
• Petitioner(s): Weber, Inc.
• Patent Owner(s): Provisur Technologies, Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Feed Conveyor for Depositing Articles
• Brief Description: The ’005 patent discloses a conveying system for depositing articles, such as food patties, onto a downstream conveyor. The system uses a feed conveyor with an endless circulating belt, a movable discharge end, and a belt accumulation region that allows the discharge end to retract across the downstream conveyor while depositing the articles.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 8-11 are obvious over Rheon in view of Pruett.

• Prior Art Relied Upon: Rheon (European Patent Application Publication No. 0798242 A2) and Pruett (Patent 5,761,883).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rheon discloses nearly all elements of independent claim 1. Rheon teaches a food product mounting apparatus with a feed conveyor that deposits articles onto a downstream conveyor. This apparatus includes an endless circulating belt, a movable discharge end that retracts to deposit products, a roller/pulley system that controls a belt accumulation region, a first motor to move the roller, and a second motor to circulate the belt, all managed by a control unit. Petitioner argued the only missing element is the requirement that the controller precisely control the conveyor's end position and speed. This limitation, Petitioner contended, is taught by Pruett, which discloses a loading machine using servomotors and associated encoders to precisely control the position of a conveyor belt for precise product placement.
  • Motivation to Combine: A POSITA would combine Pruett’s precise servomotor control with Rheon’s conveyor system to achieve known benefits. These benefits included providing the precision movements and smooth acceleration needed to avoid overturning or distorting food products and enabling more accurate placement onto a downstream conveyor. Furthermore, using servomotors would make the system more adaptable to irregular product supply rates, a scenario explicitly mentioned in Rheon.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in this combination. Servomotors and their associated feedback controls were well-known and widely used with conveyor systems. Rheon’s system was well-adapted for the modification as it already included the basic components of a controller, electric motors, and encoders, which could be readily upgraded with Pruett’s teachings to achieve enhanced precision.
  • Key Aspects: Petitioner heavily relied on the prosecution history of the corresponding European application, where the Patent Owner allegedly admitted that a combination of features nearly identical to those in claim 1 of the ’005 patent was known in the prior art, as disclosed by Rheon.

Ground 2: Claims 7 and 12-22 are obvious over Rheon and Pruett in view of Soper.

• Prior Art Relied Upon: Rheon (European Patent Application Publication No. 0798242 A2), Pruett (Patent 5,761,883), and Soper (Patent 5,730,650).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged claims that specifically recite depositing "patties" from a "patty-forming machine." Petitioner argued this combination builds directly on Ground 1 by adding Soper. Soper discloses a "food patty molding machine" with a reciprocating mold plate and a mechanism to eject the formed patties. Petitioner contended that a POSITA would simply substitute Rheon's generic "food product making unit" with Soper's specific patty-forming machine. The combined teachings of Rheon and Pruett would provide the precisely controlled conveyor for depositing the patties formed by Soper. Soper also teaches using an encoder as a proximity sensor to monitor the mold plate's reciprocation, mapping to dependent claims.
  • Motivation to Combine: A POSITA would combine a patty-forming machine like Soper with a conveyor system like that taught by Rheon and Pruett because it was a conventional and convenient way to transport freshly formed patties for further processing. The prior art demonstrated that conveyor belts were routinely used with patty-forming machines to continuously clear ejected products and move them to the next station, such as for freezing or packaging.
  • Expectation of Success: A POSA would have had a high expectation of success, as combining food forming machines with conveyors was a ubiquitous and well-understood practice in the industry. The integration would have been predictable, especially since Rheon already disclosed using its conveyor with a generic "food producing machine," and Soper’s machine simply provided a specific, well-known type of such a unit.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core assertion was that the primary prior art reference, Rheon, was never considered by the examiner during the original prosecution of the ’005 patent. Petitioner further argued that Rheon is highly material, pointing to the Patent Owner's own admissions during prosecution of a corresponding European application where it conceded that Rheon taught nearly all the elements of the invention.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-22 of Patent 6,669,005 as unpatentable under 35 U.S.C. §103.