Weber, Inc. v. Provisur Technologis, Inc.

Docket No. 2022-1751, -1813 (IPR2020-01556, -01557 (https://cafc.uscourts.gov/opinions-orders/22-1751.OPINION.2-8-2024_2267070.pdf)

REYNA, HUGHES, STARK

February 8, 2024

Brief Summary:  Board IPR decisions reversed and vacated for improper determination of public availability of instruction manuals and claim construction determinations.

Summary:   Weber appealed two IPR final written decisions (FWDs) finding that Provisur’s US 10,639,812 and 10,625,436 relating to “high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses” were shown to be unpatentable for obviousness.  The Board first concluded that “Weber’s operating manuals were not prior art printed publications” because those “were distributed to just ‘ten unique customers’” and “subject to confidentiality restrictions based on the Board’s interpretation of the operating manuals’ copyright notice and the intellectual property rights clause in Weber’s terms and conditions underlying the sales of each slicer product.”  The Board also found that, even if the manuals were prior art, the “asserted prior art combinations do not disclose the ‘disposed over’ and ‘stop gate’ limitations from claim 1 in each challenged patent”.  The FC panel reviewed the Board’s legal conclusion regarding whether the manuals are prior art de novo (102(b); Valve, FC 2021).  The FC panel explained that “[t]he statutory phrase ‘printed publication’ from § 102 has been defined to mean a reference that was ‘sufficiently accessible to the public interested in the art’” (In re Klopfenstein, FC 2004; Jazz Pharms., FC 2018; Valve (“whether interested members of the relevant public could locate the reference by reasonable diligence”)).  Weber argued the Board misapplied Cordis (FC 2009) in which descriptions of “an inventor’s work on intravascular stents that were only distributed to a handful of university and hospital colleagues as well as two companies interested in commercializing the technology” were not public disclosures because there was “clear evidence that such academic norms gave rise to an expectation that disclosures will remain confidential” nor a showing “that these or similar commercial entities typically would make the existence of such documents known and would honor requests for public access.”  This situation was determined to be “readily distinguishable” as the manuals “were created for dissemination to the interested public to provide instructions” and guidance regarding the slicer, were accessible to interested members of the public (e.g., by purchasing a slicer or upon request, available at trade shows) (e.g., “a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility” (Valve); cost alone is not dispositive (GoPro, FC 2018 (also trade show)).  The Board relied on the copyright notice, finding it “require[s] confidentiality” (Correge, FC 1983) and Weber’s IP provisions associated with the slicer, but the FC panel found these findings to be unsupported by substantial evidence (e.g., “no dispositive bearing on Weber’s public dissemination of operating manuals to owners after a sale has been consummated”).  The FC panel also found that Weber’s prior art discloses the “disposed over” limitation (as determined from the claim language and specification (3M, FC 2013; Phillips, FC 2005; Malvern, FC 2023; Genuine Enabling, FC 2022).  The FC panel also reversed the Board’s construction of the “stop gate” limitation.  The decisions were therefore reversed-in-part, vacated-in-part and remanded.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.