Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2019-01464
• Patent #: 9,399,531
• Filed: August 9, 2019
• Petitioner(s): Weber, Inc.
• Patent Owner(s): Provisur Technologies, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Interleaver for Food Slicing Machines
• Brief Description: The ’531 patent discloses a web dispensing apparatus for interleaving sheets of material, such as paper, between slices of a food product. The system uses a drawing station to pull web material from a supply and a feed station to move the material to a slicing plane, with a controlled slack loop of material maintained between the two stations to improve reliability in high-speed operations.

3. Grounds for Unpatentability

Ground 1: Obviousness over Recher and Jordan - Claims 1, 2, 4, and 8 are obvious over Recher in view of Jordan.

• Prior Art Relied Upon: Recher (DE 199 13 203) and Jordan (Patent 3,848,757).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jordan disclosed every element of independent claim 1. Specifically, Jordan taught a high-speed paper interleaving system featuring a supply roll, a drawing station (take-up rollers 24), and a feed station (feed rollers 25, 26). These stations are driven at differential speeds, with the tension between them controlled by maintaining a slack loop (29). An electronic computer acts as a controller, receiving signals from non-contact photocell sensors (34) that monitor the loop size to adjust the speed of the drawing station rollers. Petitioner asserted that Recher disclosed the context for the combination: a simplified food slicer with a single slicing plane for cutting both the food product and the interleaving paper.
  • Motivation to Combine: A POSITA would combine Jordan’s well-known, high-speed slack-loop paper feeding system with Recher’s simplified single-slicing-plane machine. Petitioner argued the motivation was to achieve the high-speed paper feeding benefits of Jordan’s system while retaining the mechanical simplicity and reduced part count of Recher’s design. Jordan expressly taught that its system could be combined with known high-speed slicing machines.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining these known interleaving subsystems was a predictable integration. Implementing Jordan’s paper feed mechanism into a machine like Recher’s would be a straightforward application of known engineering principles.

Ground 2: Obviousness over Recher, Jordan, and Biforce - Claims 3 and 14 are obvious over Recher in view of Jordan and Biforce.

• Prior Art Relied Upon: Recher (DE 199 13 203), Jordan (Patent 3,848,757), and Biforce (DE 41 25 539).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Recher and Jordan by adding Biforce to teach the "tensioning station" recited in claims 3 and 14. Petitioner contended that Biforce disclosed a dancer roller arrangement located between the web supply roll and the unwinding rollers. This arrangement serves as a "continuous web temporary store" that compensates for the inertia of the large supply roll during startup and braking, thereby controlling tension.
  • Motivation to Combine: A POSITA would recognize that the frequent starting and stopping of the supply roll in the Jordan system would create inertia, leading to inconsistent tension and potential paper tearing. Biforce’s dancer roller assembly was a known solution to this exact problem in web-handling systems. Therefore, a POSITA would be motivated to add a Biforce-like tensioning station to the Jordan system to improve its reliability and performance, particularly at high speeds.
  • Expectation of Success: The integration would be predictable, as dancer rollers are a standard, well-understood component for managing web tension. Modifying the Jordan system to include such a device would be a routine design choice for a POSITA.

Ground 3: Obviousness over Recher, Jordan, and Callan - Claims 9 and 10 are obvious over Recher in view of Jordan and Callan.

• Prior Art Relied Upon: Recher (DE 199 13 203), Jordan (Patent 3,848,757), and Callan (Patent 5,678,484).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground adds Callan to the Recher/Jordan combination to teach the specific feed roller configuration of claim 9. Callan, while in the printing press field, disclosed using opposing rollers with a resilient and discontinuous interface (a plurality of rubber rings) to form a pinch nip for driving a web. These rings improve the gripping action on the web. Petitioner argued that Callan’s staggered ring configuration (claim 10) also creates corrugations in the paper, similar to features disclosed in Jordan.
  • Motivation to Combine: Jordan taught that it was desirable to include devices to produce corrugations in the paper to prevent it from rolling up after being fed into the slicing plane. A POSITA would recognize that using Callan's rubber rings on Jordan’s feed rollers would achieve two goals simultaneously: improving the grip to better pull the paper and creating the desired corrugations for stability. This represented a known technique to improve a similar device for a known purpose.
  • Expectation of Success: A POSITA would have expected success, as implementing rubber rings on feed rollers is a straightforward mechanical modification. Callan expressly taught how to mount the rings, making the implementation well within the skill of a POSA.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Gaskins (for a pneumatic actuator on the tensioning station), Alexander (for a non-contact sensor to detect low supply), Sykes (for a roller with a smooth opposing surface), and Brueckel (for a pressurized air dispenser to support the slack loop).

4. Key Claim Construction Positions

• “tension ... is controlled”: Petitioner argued this term’s ordinary meaning includes controlling the degree of slackness or accumulation of the web material, as described in the ’531 patent’s abstract and specification.
• “senses tension”: Petitioner contended this term includes indirect sensing of tension, such as using an optical or ultrasonic sensor to detect the position or size of the slack loop, from which tension is inferred.
• “adjust the differential speed of said first and second drivers”: Petitioner argued this includes adjusting the speed of only one of the two drivers. This position was supported by the specification and an admission by the Patent Owner’s corporate affiliate during a corresponding European opposition proceeding.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It contended that the asserted prior art references and the specific grounds of unpatentability were never cited, applied, or considered by the examiner during the original prosecution of the ’531 patent, and therefore the petition presented art and arguments that were not cumulative to those already of record.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’531 patent as unpatentable under 35 U.S.C. §103.