On October 2, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the United States District Court for the Western District of Missouri in Case No. 5:19-cv-06021-SRB, Judge Stephen R. Bough, denying defendant Weber’s motions for judgment as a matter of law and for a new trial. Provisur Technologies, Inc. v. Weber, Inc., __ F.3d __ (Fed. Cir. October 2, 2024). In its decision, the CAFC found that the district court had wrongly upheld a jury verdict finding infringement where the accused product could not readily be placed in an infringing configuration and finding willfulness based on testimony suggesting a failure to seek advice of counsel. The CAFC further found that the district court abused its discretion by upholding a flawed damages verdict.
In a jury trial held October 2022, Weber was found to have willfully infringed certain claims of Provisur’s U.S. Patent Nos. 10,625,436 and 10,639,812 directed to high-speed mechanical meat and cheese slicers and claim 14 of Provisur’s U.S. Patent No. 7,065,936 directed to a fill and packaging apparatus for loading sliced foods into packages. Weber filed a motion for judgment as a matter of law of noninfringement and no willfulness and a motion for a new trial on both issues as well as on damages. The district court denied both motions. Weber appealed.
During the appeal, Weber conceded that its noninfringement arguments with respect to the ’812 and ’436 patents were no longer available in light of an intervening decision in which the CAFC, on appeal from a decision of the Patent Trials and Appeals Board, found that certain prior art Weber operating manuals disclosed certain claim limitations in these patents.
Regarding the ’936 patent, the CAFC agreed with Weber that there was no infringement as a matter of law because Provisur failed to prove Weber’s accused SmartLoader product satisfies the claimed advance-to-fill limitation of claim 14. To the contrary, noted the CAFC, Provisur conceded that the SmartLoader is sold to customers as a noninfringing retract-to-fill conveyor. At trial, Provisur’s expert presented evidence that the SmartLoader could be reprogrammed to operate as an advance-to-fill conveyor. However, the CAFC found this evidence insufficient to prove infringement.
The CAFC explained that an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, 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. The CAFC further explained that an accused device meets the capability standard if it is readily configurable to infringe. According to the CAFC, Provisur did not meet this standard because the reprogramming needed to place the SmartLoader in an infringing configuration required access to portions of the SmartLoader operator interface that are not accessible to purchasers.
The CAFC found that the district court had also erred in upholding the jury’s willful infringement determination. In particular, the CAFC agreed that testimony about Weber’s failure to consult a third party regarding the asserted patents should have been excluded under 35 U.S.C. § 298. This statute prohibits, inter alia, evidence of failure of an infringer to obtain the advice of counsel from being used to prove that the infringer willfully infringed.
Prior to trial, Weber moved to exclude testimony from a Provisur expert, Mr. John White, who opined that Weber’s infringement was willful in material part because of Weber’s failure to present evidence of advice of counsel. The district court granted Weber’s motion. During trial, however, Mr. White testified about Weber’s failure to consult a third party to evaluate the allegedly infringed patents. Provisur argued Mr. White’s testimony was about industry standards for intellectual property management. But Mr. White, an attorney, did not distinguish between legal and non-legal services when testifying about consulting a third party. The CAFC concluded that Provisur could not circumvent § 298 by substituting advice from a third party for advice of counsel.
The CAFC also found that the district court abused its discretion in upholding a jury damages award of $10.5 million in reasonable royalties. The CAFC explained that the accused features of Weber’s slicers and SmartLoader are only parts of these accused products, which themselves are each just components of a multicomponent slicing line. Provisur’s expert testified that the patented features drive the demand or substantially create the value of Weber’s accused products, and Provisur relied on this testimony to support using the value of the entire slicing line as the relevant royalty base. But the CAFC determined that this expert testimony was conclusory and did not provide any evidence, e.g., evidence from customers, to show the patented features drove the demand for the entire slicing line.
Accordingly, the CAFC reversed the district court’s denial of judgment as a matter of law of noninfringement of the ’936 patent and of willful infringement and reversed the district court’s denial of a new trial on damages.
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