Provisur Technologies, Inc. v. WEBER, INC., Cross-Appellant 2021-1851, 2021-1852, 2021-1892, 2021-1893 Appeals…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PROVISUR TECHNOLOGIES, INC.,
Appellant
v.
WEBER, INC.,
Cross-Appellant
______________________
2021-1851, 2021-1852, 2021-1892, 2021-1893
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
01461, IPR2019-01462.
______________________
Decided: December 15, 2022
______________________
MICHAEL BABBITT , Willkie Farr & Gallagher LLP, Chi-
cago, IL, argued for appellant. Also represented by REN-
HOW H ARN, S ARA T ONNIES HORTON, CRAIG C. M ARTIN.
J ON WRIGHT , Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for cross-appellant. Also repre-
sented by D ONALD B ANOWIT , BRADY G LEASON, RALPH WIL-
SON P OWERS .
______________________
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 2
Before P ROST , REYNA, and STARK, Circuit Judges.
STARK, Circuit Judge.
On petitions filed by Weber, Inc. (“Weber”), the Patent
Trial and Appeal Board (“Board”) instituted inter partes
review (“IPR”) proceedings as to the patentability of U.S.
Patent Nos. 7,065,936 (the “’936 patent”) and 7,533,513
(the “’513 patent”), which are assigned to Provisur Technol-
ogies, Inc. (“Provisur”). The ’936 patent covers an appa-
ratus and the ’513 patent covers a method, both relating to
an industrial food production device for depositing food into
containers.1 The Board found most – but not all – of the
claims in both patents to be unpatentable as obvious.
Provisur appeals based on what it contends is an erro-
neous construction of the patents’ “multi-fill” limitation.
We conclude that the Board’s construction, which rejected
Provisur’s proposal to limit the claims to simultaneous de-
posits, was correct – and, even if it was not, any error was
harmless. Weber cross-appeals the Board’s failure to find
certain claims of the ’936 and ’513 patents unpatentable.
With respect to those claims, substantial evidence supports
the Board’s finding that Weber did not prove the required
motivation to combine. Accordingly, we affirm the Board’s
determinations.
I
The ’936 and ’513 patents teach systems and methods
that may be used in an industrial food processing facility
to place prepared stacks of sliced food into containers.
More particularly, the patents teach depositing drafts (that
is, piles, stacks, or groups of thinly sliced food) into a grid
of at least two by two containers (which the patents also
call “pockets”). The invention uses a shuttle conveyer to
1 The ’513 patent is a continuation of the ’936 patent.
They share a materially identical written description.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 3
“fill the first row of pockets with drafts” before “retract[ing]
to fill the second row of pockets.” ’936 patent at 2:50-54.
Claim 1 of the ’936 patent recites:
[a]n apparatus for filling food product drafts
into packages, comprising:
a supply of open top container portions ar-
ranged in rows that are displaced along
a longitudinal direction and having a
first row and a longitudinally displaced
second row and carried by an elongated
web of film and movable by said web
along said longitudinal direction into a
fill station; and
a shuttle conveyor having a conveying sur-
face, said shuttle conveyor comprises a
device to retract and to extend said con-
veying surface, said conveying surface
arranged above said fill station and
having an end region longitudinally
movable to a first position arranged to
deposit food product drafts into said
container portions of said first row by
said conveying surface, and while said
web remains stationary, said device re-
tracts or extends said conveying surface
to reposition said end region to a second
position arranged to deposit food prod-
uct drafts carried on said conveying
surface into said container portions of
said second row.
(Emphasis added) Claim 1 of the ’513 patent recites:
[a] method for filling food product drafts into
packages, comprising the steps of:
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 4
supplying open top container portions ar-
ranged in rows that are spaced-apart
along a longitudinal direction and hav-
ing a first row and a longitudinally
spaced-apart second row and connected
to move longitudinally together, said
first and second rows movable together
along said longitudinal direction into a
fill station;
providing a conveyor having a retractable
and extendable conveying surface, said
conveying surface arranged above said
fill station and having an end region
longitudinally movable to a first posi-
tion arranged to deposit food product
drafts into said container portions of
said first row by said conveying sur-
face, moving said end region to said
first position and depositing food drafts
into container portions of said first row;
and
while said first and second rows are in said
fill station, retracting or extending said
conveying surface to reposition said end
region to a second position arranged to
deposit food product drafts carried on
said conveying surface into said con-
tainer portions of said second row.
(Emphasis added) The emphasis shows what we, following
the lead of the parties and the Board, refer to as the “multi-
fill” limitation.
Dependent claim 6 of the ’513 patent is representative
of the “reverse-fill” limitation that is the subject of Weber’s
cross appeal. It recites:
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 5
[t]he method according to claim 1, comprising
the further step of: after said first and second
rows are filled, while said first and second
rows advance to locate said succeeding group
of empty rows of container portions in said fill
station, said conveying surface retracts from
an advanced position to a retracted position to
fill a new first row of a succeeding group of
empty rows of container portions.
Weber petitioned the Board to institute IPR proceed-
ings on every claim of the ’936 and ’513 patents. Weber’s
petitions relied on three pieces of prior art relevant to this
appeal: Honsberg, Weber446, and Hollymatic.2 Honsberg
teaches an apparatus for placing food into containers. It
specifically discloses positioning food on the end of a con-
veyor above the containers. Then the conveyer is abruptly
retracted so the ground is “taken from under the feet” of
the food products, causing the food to drop into the contain-
ers below. J.A. 1229. Weber446 similarly describes depos-
iting food by abruptly moving the conveyer so that the
ground is removed from beneath the food. Hollymatic dis-
closes a conveyer capable of multiple retractions that de-
posit product into multiple rows of containers and further
teaches a second retraction step.
Weber argued that the independent claims of both pa-
tents were obvious over combinations of (1) Honsberg and
Hollymatic or (2) Weber446 and Hollymatic. The Board in-
stituted and decided that most of the claims were un-
patentable for obviousness over both of Weber’s
combinations. In its Final Written Decisions, the Board
found that Weber failed to prove the obviousness of only
2 Weber relied on other prior art, in combination
with Honsberg and Hollymatic, to satisfy additional limi-
tations found only in dependent claims, none of which is
pertinent to the appeal or cross-appeal.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 6
the following claims: claims 5, 14, and 21 of the ’936 patent
and claims 6 and 7 of the ’513 patent. Provisur and Weber
both appealed.3
II
The parties agree that claims 1 and 10 of the ’936 pa-
tent and claim 1 of the ’513 patent require “multi-fill” dep-
osition (also referred to as deposit) of slices into containers.
They further agree that the “multi-fill” limitation requires
the deposition of (1) multiple drafts into (2) multiple recep-
tacles in a row before (3) moving to a new row to repeat the
process. They dispute whether the deposits in any single
row must occur simultaneously and, if so, whether the prior
art taught simultaneous deposits.
We review the Board’s legal conclusions, including its
claim construction, de novo and underlying factual findings
for substantial evidence. See Intel Corp. v. Qualcomm Inc.,
21 F.4th 801, 808 (Fed. Cir. 2021).
A
The Board construed “multi-fill” to include non-simul-
taneous deposition of drafts, including what the Board de-
scribed as “piece-by-piece” or “one-by-one” deposition. In
other words, the Board found the claims may be met by de-
positing drafts one at a time into the containers in a given
row so long as multiple containers in that row are filled
with drafts before any container in the next row is filled.
That is, as the Board explained, the multi-fill claim lan-
guage is broad enough to cover “when drafts have a stag-
gered arrangement on the conveyor belt and drafts are
3 The Board had subject-matter jurisdiction under
35 U.S.C. § 6. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 7
deposited one by one in the package pockets of each row”
before moving to the next row. J.A. 14, 87.
Provisur argues that the Board erred in rejecting its
proposed narrower construction, which would require that
all pockets in a single row be filled simultaneously. We
agree with the Board that the asserted claims do not re-
quire all drafts in a row to be deposited at the same time.
The patents’ claims describe placing “drafts” into “con-
tainer portions” in a first row and then depositing “drafts”
into additional “container portions” in a second row. ’936
patent at claim 1; ’513 patent at claim 1. The claims con-
tain no language requiring or even suggesting that deposits
in a given row must occur simultaneously. Nothing in the
patents’ written description or prosecution history narrows
the claims in this manner either.
Provisur nonetheless contends that its proposed simul-
taneity requirement is evident from the ’513 patent’s use of
the plural forms of “drafts” and “container portions.” But
the plural language can also be read, instead, merely to
mean that multiple drafts need to be placed – whether one
at a time or simultaneously – into the multiple containers
in each row before the device moves to a new row. Or, as
the Board put it, “the claims do not recite any particular
timing or order for how the drafts are deposited: the claims
merely require depositing a row of drafts in package pock-
ets at each of the first and second positions.” J.A. 14, 87.
We agree with the Board’s rejection of Provisur’s proposed
construction.
Provisur also observes that the only embodiment dis-
closed in the patents shows simultaneous deposits. Claim
scope is not generally limited to the disclosed embodi-
ments, even when the patent depicts only one. See Phillips
v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[W]e
have expressly rejected the contention that if a patent de-
scribes only a single embodiment, the claims of the patent
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 8
must be construed as being limited to that embodiment.”).
Provisur offers no persuasive explanation as to why a per-
son of ordinary skill in the art would read its claims as lim-
ited to the one embodiment.
Provisur argues that because simultaneous deposits
are more efficient and the specifications emphasize the
benefits of the invention, reading the claims in the context
of the written descriptions necessitates finding a simulta-
neity requirement. Yet the portions of the patents touting
the benefits of the invention do not provide a definition or
constitute a clear and unmistakable disclaimer of non-sim-
ultaneous deposits. Further, as we have previously held,
“not every benefit flowing from an invention is a claim lim-
itation.” i4i Ltd. v. Microsoft Corp., 598 F.3d 831, 843 (Fed.
Cir. 2010), aff’d, 564 U.S. 91 (2011).
As a final challenge to the Board’s construction, Provi-
sur asserts that the Board violated the Administrative Pro-
cedure Act (“APA”), 5 U.S.C. § 554(b) and (c), in construing
the multi-fill limitation because, in Provisur’s view, the
parties did not dispute the meaning of the term. Provisur
complains that it was unfairly denied the opportunity to
present its claim construction position and to respond to
the construction the Board adopted.
We disagree. Provisur had adequate notice that the
Board might adopt a construction of the “multi-fill” limita-
tion that did not require simultaneity. Although Weber did
not challenge Provisur’s preferred construction in its re-
plies, it had argued in its petitions that the Board should
apply the plain and ordinary meaning of the term. Provi-
sur, thus, was on notice that the term was at issue. See
generally WesternGeco LLC v. ION Geophysical Corp., 889
F.3d 1308, 1328 (Fed. Cir. 2018) (“[The] Board is not bound
to adopt either party’s preferred articulated construction of
a disputed claim term.”).
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 9
Unlike in Qualcomm Inc. v. Intel Corp., 6 F.4th 1256,
1261-63 (Fed. Cir. 2021), where we faulted the Board for
failing to give notice before it ruled on an otherwise undis-
puted claim construction issue that the Board had no brief-
ing on, here Provisur’s position on simultaneity was fully
heard. In its Patent Owner Responses to Weber’s petitions,
Provisur set out its arguments for why simultaneity is re-
quired. Provisur argued to the Board that “the claim[s] re-
quire[] the end region to deposit ‘drafts’ into the ‘container
portions’ at the same time,” J.A. 2024, 2098, and further
that Weber’s references did not teach the “multi-fill” limi-
tation because they did not (in Provisur’s view) disclose
simultaneous deposits. Provisur cannot demonstrate lack
of notice and opportunity to respond when its own briefing
addresses the very issue on which it claims it was not
heard. See Genzyme Therapeutic Prods. Ltd. v. Biomarin
Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016). Accord-
ingly, we reject Provisur’s APA argument.4
We affirm the Board’s construction of the “multi-fill”
limitation and hold that the Board did not violate Provi-
sur’s rights under the APA. Since Provisur does not con-
tend that its patents are valid under the Board’s
construction, we affirm the Board’s finding of unpatenta-
bility of the claims at issue in Provisur’s appeal.
B
Even if we were to conclude that the Board’s construc-
tion of the “multi-fill” limitation was incorrect, we would
4 Provisur also argues the Board violated the APA in
crediting an anticipation argument under the guise of ob-
viousness. This argument is meritless. That the Board
found claims obvious even though Weber argued the multi-
fill limitation is disclosed completely in individual pieces of
prior art is consistent with an obviousness inquiry.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 10
still reach the same result. The Board expressly analyzed
Weber’s prior art combinations under Provisur’s preferred
construction. The Board had substantial evidence to sup-
port its findings that Weber’s combinations of prior art
taught simultaneously depositing stacks.
For the Honsberg-Hollymatic combination, the Board
explained that Honsberg discloses simultaneous deposits.
Specifically, Honsberg describes depositing multiple drafts
into multiple containers in a single row. The Board further
found that a subsequent piece of art, German patent appli-
cation DE 4202915 A1, “suggests that Honsberg is capable
of ‘multi-fill’ [i.e., multiple, simultaneous] deposition.” The
Board additionally credited Weber’s extrinsic evidence sup-
porting the view that an artisan of ordinary skill would rec-
ognize that Honsberg could be used to simultaneously
place drafts and that doing so would be more efficient than
depositing drafts for a given row piece-by-piece. Based on
this substantial evidence, the Board found that Honsberg
teaches “that multiple drafts are deposited in a single with-
drawal of the slide in the multi-laned apparatus.”
The Board’s conclusions regarding the Weber466-Hol-
lymatic combination were similar and equally supported by
the record. The Board found that Webber446 disclosed or
suggested simultaneous deposits, noting that Webber446
described placing portions (plural) into containers. The
Board added that, based on the testimony of Weber’s expert
as well as Weber466’s recitation of multiple lanes on the
conveyor, a person of ordinary skill in the art would have
used multiple rows to simultaneously deposit drafts to im-
prove the rate of production.
In sum, there was substantial evidence to support the
Board’s findings that both Honsberg and Weber466 sug-
gest simultaneously depositing multiple drafts into multi-
ple containers in a row, rendering the claims at issue in
Provisur’s appeal invalid as obvious even under Provisur’s
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 11
preferred construction of the “multi-fill” limitation. Thus,
even if the claim construction were erroneous (and we have
found it was not), such error would be harmless. See In re
Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004) (explaining
that Board errors not affecting outcome are harmless).
III
In its cross-appeal, Weber challenges the Board’s con-
clusion that the “reverse fill” claims – that is, claims 5, 14,
and 21 of the ’936 patent and claims 6 and 7 of the ’513
patent – were not proven unpatentable. These claims in-
volve depositing drafts starting from a retracted position of
the conveyer and then moving to an extended position. The
Board concluded that Weber failed to show that a person of
ordinary skill in the art would have been motivated to
achieve this arrangement. The Board’s findings are sup-
ported by substantial evidence.
The Board heard testimony that “depositing food items
in the advancing direction would double the number of
steps necessary for deposition, adding needless complexity
and increasing the likelihood of malfunction.” J.A. 43, 119
(citing J.A. 2960-61). The Board recognized that because
of this increased complexity, a person of ordinary skill in
the art would have lacked motivation to combine the refer-
ences and modify them to obtain the reverse fill configura-
tion. This testimony was substantial evidence for the
Board’s conclusion.
Weber counters that a skilled artisan would have been
capable of reversing the order in which the rows are filled.
Even if a person of skill would have this knowledge, it does
not necessarily follow that such an artisan would have any
motivation to combine the prior art in this manner. See
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1367 (Fed. Cir. 2016).
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 12
Weber also contends that the Board erred in failing to
consider both the advantages and disadvantages of its pro-
posed reverse fill modification. Weber misconstrues the
record. The Board’s conclusion did not depend on a deter-
mination that the reverse-fill configuration was not the
best configuration. Rather, the Board concluded there was
no motivation to achieve the limitation, a finding substan-
tial evidence supports.
Accordingly, we affirm the Board’s determination that
claims 5, 14, and 21 of the ’936 patent and claims 6 and 7
of the ’513 patent have not been proven unpatentable.
IV
We have considered both parties’ remaining arguments
and find they lack merit and do not require discussion.
Thus, for the foregoing reasons, we affirm the Board’s de-
cisions.
AFFIRMED
COSTS
Each party to bear its own costs.
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