Weber Inc v. Provisur Technologies Inc

1. Case Identification

• Case #: IPR2020-01556
• Patent #: 10,625,436
• Filed: September 16, 2020
• Petitioner(s): Weber, Inc.
• Patent Owner(s): Provisur Technologies, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Food Article Slicing Machine
• Brief Description: The ’436 patent discloses an automated food slicer that uses a system of conveyors and "food article grippers" to feed food products into a rotating slicing blade. The invention also recites a "stop gate" to support the food products during slicing and to open for ejecting unwanted end portions.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over the 2006 904 manual in view of Lindee.

• Prior Art Relied Upon: 2006 904 manual (Weber Slicer CCS 904 Operating Manual, 2006) and Lindee (Patent 5,628,237).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the 2006 904 manual, which describes a commercial food slicer, disclosed nearly all elements of the challenged claims. This included a food article loading apparatus with a lift tray (the "product conveyor"), a feed apparatus with a gripper (the "product holder") disposed above the loading apparatus, a slicing station, and a pivoting stop gate (the "product bed conveyor") that supports food articles and opens to eject end portions. Petitioner contended that Lindee disclosed the remaining key limitation: a food article gripper driven by an endless conveyor belt (a timing belt). The combination of the comprehensive slicer system from the 2006 904 manual with the belt-driven gripper mechanism from Lindee allegedly rendered all limitations of independent claims 1 and 9 obvious.
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSA), starting with the 2006 904 manual's slicer, would be motivated to look for known methods to actuate the gripper. A POSA would combine Lindee's timing belt gripper actuation system to provide the mechanical details for moving the gripper in the 904 manual's slicer. This combination was presented as a simple substitution of one known element for another to achieve the predictable result of actuating a food gripper. Further, Petitioner argued that Lindee taught the advantage of using independently driven grippers to vary slice thickness for different food products, which would motivate a POSA to improve the 904 slicer with Lindee's technology.
  • Expectation of Success: Petitioner argued a POSA would have a reasonable expectation of success in combining the references because both relate to food slicers and employ similar feeding mechanisms. The modification was described as a straightforward and predictable mechanical implementation well within the skill of a POSA.

Ground 2: Claims 1-16 are obvious over the 2010 904 manual in view of Lindee.

• Prior Art Relied Upon: 2010 904 manual (Weber Slicer CCS 904 Operating Manual, 2010) and Lindee (Patent 5,628,237).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner stated this ground was substantively identical to Ground 1, as the 2010 904 manual disclosed a slightly updated but functionally equivalent slicer to the 2006 version. The primary difference highlighted was that the 2010 904 manual explicitly disclosed upper conveyors "with separate drives" that allow them to be "individually driven with different speeds." This feature was argued to make the motivation to incorporate Lindee's independently driven grippers even more compelling.
  • Motivation to Combine: The motivation arguments from Ground 1 were incorporated. Petitioner emphasized that the 2010 904 manual's explicit disclosure of separate drives for its upper conveyors would directly motivate a POSA to implement Lindee’s independently driven gripper system. This would improve the machine's performance by enabling different slicing thicknesses for multiple food loaves simultaneously, a known and desirable feature in the art taught by Lindee.
  • Expectation of Success: The expectation of success argument was identical to that asserted in Ground 1.

4. Key Claim Construction Positions

• "food article gripper" (Independent Claims 1, 9): Petitioner argued this term should be construed according to its plain and ordinary meaning as a structure that can actuate to grasp and release a food product. This construction was presented as critical to counter a potentially overly broad interpretation allegedly advanced by the Patent Owner in a related litigation, where "gripper" was argued to include passive features like ridges on a conveyor belt. Petitioner contended such a broad reading would create logical inconsistencies with claim language requiring the gripper to "seize" a food article.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d). The core arguments were that the primary prior art references, the 2006 and 2010 904 manuals, were never cited or applied during the original prosecution. These references were asserted to be more material than the previously considered art because they disclose key features, such as the stop gate, that were central to the patent's allowance. Petitioner also noted that while Lindee was listed on the face of the ’436 patent, it was never used in a rejection, and therefore the specific combination of the 904 manuals and Lindee was never considered by the Examiner.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the ’436 patent as unpatentable.