Provisur Technologies, Inc. v. Weber, Inc., Textor, Inc., Weber Food Technology Gmbh, Fka Weber Maschinenbau Gmbh…

United States Court of Appeals
for the Federal Circuit
______________________
PROVISUR TECHNOLOGIES, INC.,
Plaintiff-Appellee
v.
WEBER, INC., TEXTOR, INC., WEBER FOOD
TECHNOLOGY GMBH, FKA WEBER
MASCHINENBAU GMBH BREIDENBACH, TEXTOR
MASCHINENBAU GMBH,
Defendants-Appellants
______________________
2023-1438
______________________
Appeal from the United States District Court for the
Western District of Missouri in No. 5:19-cv-06021-SRB,
Judge Stephen R. Bough.
______________________
Decided: October 2, 2024
______________________
CRAIG C. M ARTIN, Willkie Farr & Gallagher LLP, Chi-
cago, IL, argued for plaintiff-appellee. Also represented by
MICHAEL BABBITT , REN-H OW HARN, SARA T ONNIES
HORTON, HENRY CROSS T HOMAS .
WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox
PLLC, Washington, DC, argued for defendants-appellants.
Also represented by DONALD BANOWIT , K RISTINA CAGGIANO
K ELLY , RICHARD CRUDO, D ANIEL Y ONAN.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 2
______________________
Before M OORE, Chief Judge, T ARANTO, Circuit Judge, and
CECCHI, District Judge.1
MOORE, Chief Judge.
Weber, Inc., Textor, Inc., Weber Maschinenbau GmbH
Neubrandenburg, Textor Maschinenbau GmbH, and We-
ber Maschinenbau Breidenbach (collectively, Weber) ap-
peal the United States District Court for the Western
District of Missouri’s denial of judgment as a matter of law
of noninfringement and no willfulness of claims 9–12 and
16 of U.S. Patent No. 10,625,436, claims 1, 7, and 8 of U.S.
Patent No. 10,639,812, and claim 14 of U.S. Patent No.
7,065,936. Weber also appeals the denial of a motion for a
new trial on infringement, willfulness, and damages. For
the following reasons, we affirm-in-part, reverse-in-part,
and remand for further proceedings.
BACKGROUND
Provisur Technologies, Inc. (Provisur) owns the ’436,
’812, and ’936 patents, which generally relate to food-pro-
cessing machinery. The ’436 and ’812 patents, which share
a common specification, relate to high-speed mechanical
slicers used in food-processing plants to slice and package
food articles, such as meats and cheeses. ’812 patent at
Abstract. Figure 1B, annotated below, illustrates the
slicer, which contains a food article loading apparatus
(blue) with a lift tray assembly (220) into which food is
placed. Id. at 4:33–43. The lift tray pivots upward and the
grippers (green), which are located on the food article feed
1 Honorable Claire C. Cecchi, District Judge, United
States District Court for the District of New Jersey, sitting
by designation.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 3
apparatus (yellow), guide the food forward for slicing. Id.
at 4:33–43, 9:60–10:4.
Appellants Op. Br. at 12.
The ’936 patent relates to a fill and packaging appa-
ratus for loading sliced foods into packages. ’936 patent at
Abstract. Figure 1 illustrates a slicing and packaging line.
Id. at 3:20–21, Fig. 1. The slicing machine (20) “cuts slices
from a loaf and deposits the slices on an output conveyor
assembly” (30). Id. at 3:39–42. The conveyor assembly (30)
moves drafts of the appropriate weight onto a staging con-
veyor (44). Id. at 3:50–58. The staging conveyor (44) deliv-
ers the rows of drafts onto a shuttle conveyor (52), which
delivers the drafts into pockets made of film. Id. at 3:59–
4:6.
The ’936 patent describes two alternative ways to fill
the pockets: retract-to-fill and advance-to-fill. The retract-
to-fill embodiment begins with the shuttle conveyor in the
extended position and fills the pockets starting farthest
from the slicer until the conveyor is fully retracted. Id. at
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 4
5:33–38. The claims covering the retract-to-fill embodi-
ment, unasserted claims 1–4, 6–13, and 15–20, were found
invalid over the prior art. Provisur Techs., Inc. v. Weber,
Inc., No. 21-1851, 2022 WL 17688071, at *5 (Fed. Cir. Dec.
15, 2022). The asserted claim covers the advance-to-fill
embodiment. The advance-to-fill embodiment begins with
the shuttle conveyor in the retracted position and fills the
pockets closest to the slicer and advances until the con-
veyor is fully extended. ’936 patent at 5:39–44. The anno-
tated figure below shows the advance-to-fill embodiment.
Appellants Op. Br. at 17.
Claim 14, the only asserted claim for the ’936 patent,
recites:
14. The apparatus according to claim 10, wherein
said shuttle conveyor is configured to fill plural
rows of pockets while said web is stationary in said
fill station, and said shuttle conveyor is configured
to retract from an extended position to a retracted
position to fill a new first row of a group of empty
pockets while said web advances to locate a suc-
ceeding plural row of pockets in said fill station.
Relevant to this appeal, Provisur sued Weber for will-
fully infringing the ’812, ’436, and ’936 patents. Provisur
alleged Weber’s 905, 906, 908, and S6 food slicers infringed
the ’812 and ’436 patents and Weber’s SmartLoader prod-
ucts infringed the ’936 patent.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 5
A jury trial was held in October 2022. The jury found
Weber willfully infringed claims 9–12 and 16 of the ’436
patent, claims 1, 7, and 8 of the ’812 patent, and claim 14
of the ’936 patent. J.A. 61–62.2 The jury awarded Provisur
$3,013,068 for the ’936 patent, $3,747,046.50 for the ’436
patent, and $3,747,046.50 for the ’812 patent. J.A. 63. Fol-
lowing the verdict, Weber moved for judgment as a matter
of law (JMOL) on the issues of infringement and willful-
ness, and a new trial on infringement, willfulness, and
damages, but the district court denied both motions. J.A.
69–72.3
Weber appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
D ISCUSSION
We review a district court’s grant or denial of JMOL
under the standard of the regional circuit. Apple Inc. v. Wi-
LAN Inc., 25 F.4th 960, 969 (Fed. Cir. 2022). The Eighth
Circuit reviews JMOL rulings de novo, applying the same
standard as the district court. Penford Corp. v. Nat’l Union
Fire Ins. Co. of Pittsburgh, PA, 662 F.3d 497, 503 (8th Cir.
2011). “A court may render judgment as a matter of law
when there is no legally sufficient evidentiary basis for a
reasonable jury to find for the nonmoving party on an issue
and all of the evidence directs against a finding for the non-
moving party.” Jones v. TEK Indus., Inc., 319 F.3d 355,
358 (8th Cir. 2003).
2 The jury also found no infringement of claim 12 of
U.S. Patent No. 6,997,089. J.A. 61. This issue is not before
us. 3 The district court also granted Provisur’s motion
for enhanced damages, doubling the jury’s award. J.A. 73–
86. This issue is not before us.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 6
I. I NFRINGEMENT
Infringement is a question of fact that is reviewed for
substantial evidence when tried to a jury. Lucent Techs.,
Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009).
“A factual finding is supported by substantial evidence if a
reasonable jury could have found in favor of the prevailing
party in light of the evidence presented at trial.” Godo Kai-
sha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., 967
F.3d 1380, 1383 (Fed. Cir. 2020).
With respect to the ’812 and ’436 patents, Weber con-
ceded its noninfringement arguments are no longer availa-
ble in this appeal in light of an intervening decision.4 Rule
28(j) Citation of Supplemental Authority, No. 23-1438
(Fed. Cir. Apr. 1, 2024), ECF No. 57 (citing Weber, Inc. v.
Provisur Techs., Inc., 92 F.4th 1059 (Fed. Cir. 2024)); see
also Oral Arg. at 0:51–4:05, https://oralarguments.cafc.
uscourts.gov/default.aspx?fl=23-1438_06052024.mp3. We
therefore affirm the district court’s denial of JMOL for non-
infringement for the ’812 and ’436 patents.
With respect to the ’936 patent, the jury found Weber’s
SmartLoader infringes claim 14. J.A. 61. After post-trial
briefing, the district court determined Weber was not enti-
tled to judgment as a matter of law or a new trial. J.A. 70–
71. Weber contends the district court erred in denying
JMOL for noninfringement because Provisur failed to
prove Weber’s SmartLoader satisfies the claimed advance-
to-fill limitation. Appellants Op. Br. at 43–54.
Claim 14 requires an advance-to-fill conveyor. J.A.
30862. The record indisputably shows Weber’s Smart-
Loader is sold to customers as a retract-to-fill conveyor.
4 Weber’s concession of infringement for purposes of
this appeal should have no impact on the pending inter
partes review, which could affect liability in this case on
remand.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 7
J.A. 66993; J.A. 42045 (Trial Tr. 1559:5–15), J.A. 41439
(Trial Tr. 953:12–14); J.A. 89412. There are no pictures or
videos showing the SmartLoader operating as an advance-
to-fill conveyor. Provisur’s expert Dr. Keith Vorst conceded
as much. J.A. 41441, 41443 (Trial Tr. 955:7–12, 957:8–16).
He also admitted he found no evidence that any Weber cus-
tomer ever used the SmartLoader to operate as an ad-
vance-to-fill conveyor. J.A. 41443 (Trial Tr. 957:21–25).
Provisur’s infringement theory relied on establishing
Weber’s SmartLoader could be reprogrammed to operate as
an advance-to-fill conveyor. Provisur did not proffer suffi-
cient evidence to meet its burden. Dr. Vorst testified the
SmartLoader can be configured to operate as an advance-
to-fill conveyor by manipulating certain parameters of the
conveyor. J.A. 41396 (Trial Tr. 910:10–13). He testified
the SmartLoader includes a human machine interface
(HMI) that allows someone to create a new program and
adjust the parameters of the conveyor to advance or retract
it. J.A. 41396–400 (Trial Tr. 910:18–913:14, 914:6–10). He
specifically relied on a demonstrative of the HMI screens
that allegedly enable configuration of these parameters
(shown below). J.A. 41396–400 (Trial Tr. 910:18–913:14).
Dr. Vorst testified that by adjusting parameters, such as
the front and rear position, the SmartLoader can be
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 8
configured as an advancing conveyor. J.A. 41400 (Trial Tr.
914:6–10).
J.A. 93782.
“An accused device may be found to infringe if it is rea-
sonably capable of satisfying the claim limitations.” Hil-
graeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.
Cir. 2001). “But a device does not infringe simply because
it is possible to alter it in a way that would satisfy all the
limitations of a patent claim.” High Tech Med. Instrumen-
tation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555
(Fed. Cir. 1995). We have held an accused device to meet
the capability standard if it is readily configurable to in-
fringe. See, e.g., Fantasy Sports Props., Inc. v.
Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002)
(explaining the accused device infringes where the user
must only activate the functions already present); Finjan,
Inc. v. Secure Computing Corp., 626 F.3d 1197, 1205 (Fed.
Cir. 2010) (same).
Here, Provisur proffered no evidence that Weber’s cus-
tomers could readily activate the alleged advance-to-fill
functionality. Dr. Vorst testified about configuring the
SmartLoader through the HMI, but he had access to
screens that Weber’s customers do not. Indeed, Dr. Vorst
explained that during his inspection he had to ask Weber
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 9
technicians for permission to access certain HMI screens.
J.A. 41259–60 (Trial Tr. 773:19–774:2); see also J.A.
41403–04 (Trial Tr. 917:16–918:9). Dr. Vorst further testi-
fied that at least two of these screens, including the screens
for configuring the rear and front position of the loading
conveyor and for configuring the products positions, are
necessary to reconfigure the SmartLoader to advance-to-
fill. J.A. 41404 (Trial Tr. 918:13–19). But Weber’s source
code expert Dr. Valerdi testified that only one screen of the
HMI is available to Weber’s customers. J.A. 41893–94
(Trial Tr. 1407:19–1408:23 (“Q: And so just which of these
four screens is available to the customer? A: Only the bot-
tom right screen that has the configurable number of load-
ings and some adjustment parameters. That’s the only one
that’s available to a customer of Weber.”)). Weber’s tech-
nical expert Dr. Reinholtz similarly testified that most of
the HMI screens are only available to Weber’s service tech-
nicians, but not customers. J.A. 42133 (Trial Tr. 1647:2–
6); see also J.A. 42121 (Trial Tr. 1635:2–5). The screens
required to reconfigure the SmartLoader according to Dr.
Vorst’s theory are not available to Weber’s customers.
This is not an infringement scenario where customers
can simply activate the infringing configuration. See Fan-
tasy Sports, 287 F.3d at 1118; Finjan, 626 F.3d at 1205. Dr.
Vorst is an expert who was provided access to Weber’s
products during an inspection. Weber’s customers do not
have access to the screens Provisur contends are necessary
for the SmartLoader to be reconfigured to operate as an ad-
vance-to-fill conveyor. Only Weber and its technicians
have access to the configurable parameters. Provisur has
not identified any evidence in the record that puts this fact
genuinely in dispute. Given these facts, Weber’s Smart-
Loader is not readily configurable to infringe claim 14 of
the ’936 patent. The SmartLoader can only infringe if We-
ber modifies it to operate as an advance-to-fill conveyor.
Even with access provided by Weber, Dr. Vorst only
testified that he could have reconfigured the SmartLoader.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 10
He did not testify that he was able to configure it to ad-
vance-to-fill. See J.A. 41441 (Trial Tr. 955:7–12), J.A.
42542 (Trial Tr. 2056:19–22), J.A. 43386 (Provisur’s oppo-
sition to Weber’s motion for a new trial). Dr. Vorst pro-
vided no evidence Weber’s SmartLoader ever was
configured to advance-to-fill and no evidence that he con-
figured it to advance-to-fill. He admitted as much, explain-
ing that he was unable to demonstrate the advance-to-fill
configuration because he ran out of time. J.A. 41441–43
(Trial Tr. 955:7–12, 956:21–957:16). And Provisur did not
request additional inspections. J.A. 41443 (Trial Tr.
957:18–20).
Dr. Vorst’s testimony is therefore not substantial evi-
dence demonstrating Weber’s SmartLoader infringes claim
14 of the ’936 patent. The district court erred in denying
Weber’s motion for judgment as a matter of law for nonin-
fringement for claim 14 of the ’936 patent. We therefore
reverse the district court’s denial of judgment as a matter
of law for noninfringement of claim 14 of the ’936 patent
and remand for further proceedings.
II. WILLFULNESS
Willful infringement is a question of fact reviewed for
substantial evidence following a jury trial. Polara Eng’g
Inc v. Campbell Co., 894 F.3d 1339, 1353 (Fed. Cir. 2018).
“To establish willfulness, a patentee must show that the
accused infringer had a specific intent to infringe at the
time of the challenged conduct.” BASF Plant Sci., LP v.
Commonwealth Sci. and Indus. Rsch. Org., 28 F.4th 1247,
1274 (Fed. Cir. 2022).
Weber appeals the district court’s denial of JMOL of no
willfulness. Specifically, Weber contends the district court
erred in admitting testimony in violation of 35 U.S.C.
§ 298, and the remaining evidence is insufficient to support
the jury’s verdict of willful infringement. We agree.
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Section 298 states:
The failure of an infringer to obtain the advice of
counsel with respect to any allegedly infringed pa-
tent, or the failure of the infringer to present such
advice to the court or jury, may not be used to prove
that the accused infringer willfully infringed the
patent or that the infringer intended to induce in-
fringement of the patent.
Patentees are prohibited from using the accused infringer’s
failure to obtain the advice of counsel as an element of proof
that the accused infringer willfully infringed.
Prior to trial, Weber moved to exclude testimony from
Provisur’s expert, Mr. John White, that Provisur asserted
willful infringement based in part on Weber’s failure to
present evidence of advice of counsel. J.A. 6. The district
court granted Weber’s motion to exclude Mr. White’s testi-
mony on Weber’s alleged failure to obtain advice of counsel.
J.A. 8.
During trial, however, Mr. White testified about We-
ber’s failure to consult a third party to evaluate the alleg-
edly infringed patents. J.A. 41138–43 (Trial Tr. 652:17–
657:8). Specifically, Mr. White testified that Weber did not
provide any evidence that it performed a number of evalu-
ation steps, such as a freedom to operate analysis. J.A.
41140–41 (Trial Tr. 654:24–655:5). In his expert report,
Mr. White explained a freedom to operate analysis is “typ-
ically reviewed by a qualified patent attorney” which may
include “‘opinions’ as to which patents may be problem-
atic.” J.A. 9040–41 ¶ 57. Mr. White’s testimony referenced
other potentially legal services that Weber allegedly failed
to seek.
Mr. White’s testimony violated 35 U.S.C. § 298. Provi-
sur argues Mr. White’s testimony is about industry stand-
ards for intellectual property management. Appellee Br.
41. But Mr. White, an attorney, did not distinguish
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 12
between legal and non-legal services when testifying about
consulting a third party. Provisur cannot circumvent § 298
by substituting advice from a third party for advice of coun-
sel. The district court thus erred in admitting the portion
of Mr. White’s testimony related to seeking advice from a
third party.
The remainder of Mr. White’s testimony is admissible,
but insufficient as a matter of law to establish willfulness.
Mr. White testified about Weber’s patent matrix that
tracked patents in related food processing technologies, in-
cluding the asserted patents. J.A. 41112 (Trial Tr. 626:11–
21). He explained software and Weber personnel provided
a rating out of 3 for each patent in the matrix. Id. These
ratings were described as indicating whether the patent
was relevant for purposes of further evaluation. J.A. 41113
(Trial Tr. 627:3–16). For the asserted patents, Mr. White
testified each one was provided a high score of 3. J.A.
41127 (Trial Tr. 641:8–16) (’936 patent), J.A. 41130–31
(Trial Tr. 644:23–645:17) (’812 patent), J.A. 41136–37
(Trial Tr. 650:19–651:5) (’436 patent).
At most, the patent matrix demonstrates Weber’s
knowledge of the asserted patents and their relevance to
Weber’s business in general. The patent matrix and corre-
sponding testimony do not provide any level of specificity
as to the relevance of the tracked patents for any of Weber’s
products. There is no dispute Weber knew of the asserted
patents. J.A. 31387–88. The issue here is whether Weber
knew of its alleged infringement and had a specific intent
to infringe. BASF Plant Sci, 28 F.4th at 1274. There is no
evidence Weber knew of its alleged infringement. We have
held “knowledge of the asserted patent and evidence of in-
fringement is necessary, but not sufficient, for a finding of
willfulness.” Bayer Healthcare LLC v. Baxalta Inc., 989
F.3d 964, 988 (Fed. Cir. 2021). Provisur’s evidence as a
matter of law is not enough to establish deliberate or inten-
tional infringement. Id. The district court should have
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 13
granted Weber’s motion for judgment as a matter of law.
We reverse the district court’s willfulness finding.
III. D AMAGES
When reviewing damages, we apply the law of the re-
gional circuit. Exmark Mfg. Co. Inc. v. Briggs & Stratton
Power Prods. Grp., LLC, 879 F.3d 1332, 1347 (Fed. Cir.
2018). The Eighth Circuit reviews a denial of a motion for
a new trial on damages for abuse of discretion. See Harri-
son v. Purdy Bros. Trucking Co., 312 F.3d 346, 351 (8th Cir.
2002). Evidentiary rulings, including the admissibility of
damages expert evidence, are also reviewed for abuse of
discretion. See Barrett v. Rhodia, Inc., 606 F.3d 975, 980
(8th Cir. 2010). “A district court abuses its discretion when
its decision is based on clearly erroneous findings of fact, is
based on erroneous interpretations of the law, or is clearly
unreasonable, arbitrary or fanciful.” Whitserve, LLC v.
Comput. Packages, Inc., 694 F.3d 10, 26 (Fed. Cir. 2012).
The jury awarded Provisur about $10.5 million in the
form of a reasonable royalty. J.A. 63. Provisur accused
certain features on Weber’s slicers and SmartLoader of in-
fringement. These features are parts of a larger compo-
nent, either the slicer or automation component, which
themselves are each just one component of an entire mul-
ticomponent slicing line (see below).
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 14
Appellant Op. Br. at 62.
The damages verdict rests on Provisur’s reliance on the
entire market value rule. Weber argues the district court
erred by permitting Provisur to use the entire market value
rule. We agree. The district court abused its discretion
and should have granted a new trial on damages.
“A patentee is only entitled to a reasonable royalty at-
tributable to the infringing features.” Power Integrations,
Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965,
977 (Fed. Cir. 2018). We have required any royalties be
apportioned between infringing and noninfringing features
of the accused product. Id. An apportionment analysis
generally requires determining a royalty base to which a
royalty rate will be applied. Id. For elements of multi-
component products accused of infringement, the royalty
base should be based on the smallest salable patent-prac-
ticing unit. LaserDynamics, Inc. v. Quanta Comput., Inc.,
694 F.3d 51, 67 (Fed. Cir. 2012). A necessary condition for
using “an entire multi-component product” as the base is
that the patentee proves the patented feature is the basis
for customer demand. Id.; see also Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1336 (Fed. Cir. 2009).
Provisur’s use of the entire market value rule was im-
permissible because it failed to present sufficient evidence
demonstrating the patented features drove the demand for
the entire slicing line. Provisur’s damages expert, Ms. Ju-
lie Davis, used the value of the entire slicing line as the
royalty base and applied a royalty rate to calculate the rea-
sonable royalty damages. J.A. 41524–27 (Trial Tr.
1038:16–1041:22). Ms. Davis relied on Dr. Vorst’s testi-
mony to support using the entire market value as the roy-
alty base. J.A. 41554–55 (Trial Tr. 1068:3–1069:1). Dr.
Vorst testified that the patented features drive the demand
or substantially create the value of Weber’s accused prod-
ucts. J.A. 41310 (Trial Tr. 824:17–24). But Dr. Vorst’s tes-
timony was conclusory and did not provide any evidence,
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 15
e.g., evidence from customers, to show the patented fea-
tures drove the demand for the entire slicing line.
For example, for the ’812 and ’436 patents, Dr. Vorst
testified that various features on the slicing machines are
considered conventional, and the patented features are
unique selling points. J.A. 41311–12 (Trial Tr. 825:2–
826:19). The “conventional” features he discusses include
the slicing blade, guards, conveyors, and other components
of the slicer. Id. His testimony does not explain why these
“conventional” features do not provide any value or drive
customer demand.5
Provisur failed to proffer sufficient evidence that other
features of the slicing line do not cause customers to pur-
chase the accused products. On cross-examination, Dr.
Vorst agreed that Weber has patents that cover the fea-
tures of its slicing lines. J.A. 41445–46 (Trial Tr. 959:24–
960:11). He also agreed that Weber’s customers buy slicing
lines for different reasons. J.A. 41447–48 (961:24–962:10).
Dr. Vorst did not conduct any market studies or consumer
surveys to determine whether the demand for Weber’s
5 For the ’936 patent, infringement of which is no
longer at issue for damages purposes, see supra, Dr. Vorst’s
testimony was similarly conclusory and only states the con-
figurable feature of the SmartLoader as substantially cre-
ating the value of Weber’s slicing lines. J.A. 41406 (Trial
Tr. 920:3–7). Asserted claim 14, however, only covers an
advance-to-fill conveyor, not any configuration of a smart
conveyor. J.A. 30862. Additionally, Dr. Vorst does not
point to any evidence of Weber or Weber’s customers using
the device in an infringing manner. It is inconceivable how
the advance-to-fill conveyor feature is a driver of customer
demand where Weber’s customers have not used the fea-
ture.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 16
slicing lines was driven by the patented features. There is
simply no evidence at all that the patented features drove
customer demand or substantially created the value of the
entire slicing lines. No one type of evidence is needed to
show the patented features drove customer demand, but
here there is none. We have explained that “[w]hen the
product contains other valuable features, the patentee
must prove that those other features do not cause consum-
ers to purchase the product.” Power Integrations, 904 F.3d
at 979. The district court should have granted a new trial
on damages because there is no evidence, apart from con-
clusory expert testimony, that supports invoking the entire
market value rule. While expert testimony alone may be
sufficient, in this case, where the entire slicing line in-
cludes multiple separate machines (see Figure above) from
the preparation machinery to the slicing machinery to the
automation machinery to the packaging machinery to the
end-of-line machinery, and the patented technology is just
one small component of one of the machines, and no other
evidence supports the notion that this small component of
just one portion of such a large system ever drove customer
demand, it was an abuse of discretion to allow this case to
proceed on the entire market value rule. We therefore re-
verse the district court’s denial of a new trial on damages.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the district court’s
denial of judgment as a matter of law of noninfringement
with respect to the ’812 and ’436 patents and reverse the
denial as to the ’936 patent. We reverse the district court’s
denial of judgment as a matter of law of willfulness. We
reverse the district court’s denial of a new trial on damages.
We remand for further proceedings consistent with this de-
cision.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
Case: 23-1438 Document: 67 Page: 16 Filed: 10/02/2024

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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 17
COSTS
Costs awarded to Weber.
Case: 23-1438 Document: 67 Page: 17 Filed: 10/02/2024

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