Provisur Technologies, Inc. v. Weber, Inc., et al., No. 2023-1438 (Fed. Cir. (W.D. Mo.) Oct. 2, 2024). Opinion by Moore, joined by Taranto and Cecchi (sitting by designation).
Provisur owns three patents covering food-processing machinery used to slice and package food articles such as meats and cheeses. Provisur sued Weber for infringement, and a jury agreed, finding that Weber willfully infringed all three patents and awarding damages of about $10.5 million. Following the verdict, Weber moved for judgment as a matter of law (JMOL) on the issues of infringement and willfulness, and a new trial on infringement, willfulness, and damages. The district court denied both motions, and Weber appealed.
On appeal, Weber challenged the finding of infringement for one of the patents. The asserted claim requires an “advance-to-fill” feature where a shuttle conveyor advances to fill successive pockets in a fill station. The accused product, by comparison, is sold to customers as a retract-to-fill conveyor. Provisur’s infringement theory relied on establishing that Weber’s retract-to-fill conveyor could be reprogrammed to operate as an advance-to-fill conveyor.
The Federal Circuit ruled that Provisur “did not proffer sufficient evidence to meet its burden” of proving infringement. The court explained that “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.” This was “not an infringement scenario where customers can simply activate the infringing configuration.” Thus, the district court erred in denying Weber’s motion for JMOL for noninfringement.
As to willfulness, Weber argued the district court erred by allowing trial testimony that violated 35 U.S.C. § 298, which states that the “failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent . . . may not be used to prove” willfulness. The Federal Circuit agreed. At trial, Provisur’s expert testified about Weber’s failure to consult a third party to evaluate the asserted patents. The Federal Circuit ruled that “Provisur cannot circumvent § 298 by substituting advice from a third party for advice of counsel.” And the remaining evidence was insufficient to establish willfulness. Thus, the district court should have granted Weber’s motion for JMOL for no willfulness.
Lastly, the Federal Circuit reversed the district court’s denial of a new trial on damages, holding that the court abused its discretion in permitting Provisur to use the entire market value rule to measure damages. “Provisur’s use of the entire market value rule was impermissible because it failed to present sufficient evidence demonstrating the patented features drove the demand for the entire slicing line.” The court explained that “there is simply no evidence at all that the patented features drove customer demand or substantially created the value of the entire slicing lines.”
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