Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2019-01465
• 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: Web Dispensing Arrangement for Interleaving Sheets with Sliced Food Product
• Brief Description: The ’531 patent describes an interleaver for a food slicing machine that feeds web material (e.g., paper) from a supply roll to be cut and placed between slices of a food product. The core of the invention is a system that controls the web tension between a drawing station and a feed station using a slack loop managed by a non-contact sensor.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Fessler (Patent 4,583,435) and Rapparini (WO 01/76996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fessler disclosed the foundational elements of a food interleaver, including a supply, a drawing station (first driver), and a feed station (second driver) that delivers a web to a slicing plane. However, Fessler used a mechanical, spring-loaded "pendulating roller" to manage a reserve loop between the stations. Rapparini was argued to disclose a superior, electronically controlled slack-loop system for managing flexible ribbons. Rapparini’s system used a non-contact proximity sensor to monitor the loop's position and a controller to synchronize the speeds of its unwind and withdrawal rolls, thereby controlling web tension. Petitioner mapped Rapparini's proximity sensor and controller to the claimed "non-contact sensor" and "controller" that adjust the differential speed of the drivers to maintain tension.
  • Motivation to Combine: A POSITA would combine these references to improve Fessler's design. Rapparini explicitly taught that its system eliminates the "bump" phenomenon associated with mechanical "dandy roll" devices like Fessler's pendulating roller, which suffer from inertia and provide slower response times. Petitioner argued a POSITA would have been motivated to replace Fessler’s outdated mechanical tensioning system with Rapparini’s more precise, electronically controlled slack-loop system to optimize synchronization and improve performance, especially in high-speed applications.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because it involved substituting one known type of web tensioning system (mechanical) with another known, improved type (electronic slack loop) to perform the same function in a predictable manner.

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

• Prior Art Relied Upon: Fessler (Patent 4,583,435), Rapparini (WO 01/76996), and Biforce (DE 41 25 539).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 and addressed the limitation of a "tensioning station" located between the web supply and the drawing station. Petitioner asserted that Biforce disclosed such a tensioning station in the form of a "dancer roller arrangement" in an interleaving system. This arrangement served as a temporary web store to compensate for the inertia of the large supply roll during startup and braking, thereby controlling tension between the supply and drawing station.
  • Motivation to Combine: A POSITA would add Biforce's dancer roller assembly to the Fessler/Rapparini combination to further improve the system's reliability. The drawing station in the base combination would experience speed changes that the large, high-inertia supply roll could not match instantly. This mismatch could cause excess or insufficient web material. Petitioner argued that adding Biforce's well-known solution would compensate for this inertia, a known problem in web-handling systems.
  • Expectation of Success: Success was expected as it involved adding a known component (a dancer roller) to a known system to solve a predictable problem (supply roll inertia).

Ground 5: Obviousness over Fessler, Rapparini, and Callan - Claims 9 and 10 are obvious over Fessler in view of Rapparini and Callan.

• Prior Art Relied Upon: Fessler (Patent 4,583,435), Rapparini (WO 01/76996), and Callan (Patent 5,678,484).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed limitations in independent claim 9 requiring the second driver (feed station) to comprise opposing rollers with a "resilient interface" that is "discontinuous along a lateral direction." Petitioner argued that while Fessler disclosed the basic opposing rollers, Callan, from the analogous art of paper handling for printing presses, taught this specific feature. Callan disclosed anti-wrap rollers with a plurality of rubber rings ("resilient interface") separated by gaps ("discontinuous"), which created a pinch nip to provide a better gripping action on the web.
  • Motivation to Combine: A POSITA would incorporate Callan's roller design into the Fessler/Rapparini interleaver to improve the gripping action of the feed rollers on the web material. This would provide more reliable and precise feeding of the paper into the slicing plane, a desirable improvement in any paper-feeding mechanism.
  • Expectation of Success: Callan provided express instructions on how to implement its rubber rings on rollers. A POSITA would have found it straightforward to apply this known technique to improve the function of Fessler's similar feed rollers in a predictable way.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including: claims 6-7 over Fessler, Rapparini, Biforce, and Gaskins (adding a controllable pneumatic actuator for the tensioning station); claim 5 over Fessler, Rapparini, and Alexander (adding a non-contact sensor to detect the amount of material on the supply spool); claims 11-13 over Fessler, Rapparini, Callan, and Sykes (adding specific roller geometries and anti-wrap features); and claim 15 over Fessler, Rapparini, and Brueckel (adding a pressurized air dispenser to support the slack loop).

4. Key Claim Construction Positions

• "such that tension ... is controlled": Petitioner proposed this term includes controlling the degree of slackness or accumulation of the web material, based on the patent's abstract and specification describing control in terms of "a slackened length" and "degrees of slackness."
• "senses tension of web material": Petitioner argued this includes indirect sensing of tension, such as by sensing the position or distance of the web material in the slack loop. This construction was based on the specification's disclosure of using ultrasonic or optical sensors to detect the "lowest position" of the web loop.
• "adjust the differential speed of said first and second drivers": Petitioner contended this phrase includes adjusting the speed of only one of the two drivers, as this inherently changes the differential speed between them. This was supported by the patent's specification and admissions made by the Patent Owner during European opposition proceedings for a counterpart patent.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that denial under §325(d) would be inappropriate because the art and arguments presented were not the same or substantially the same as those previously considered by the USPTO. While Fessler and Rapparini were cited during prosecution, they were allegedly not applied in the manner presented in the petition, and the additional references (Biforce, Gaskins, Alexander, Callan, Sykes) were not previously considered by the examiner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’531 patent as unpatentable.