In Provisur Technologies, Inc. v. Weber, Inc., No. 2021-1942 (Fed. Cir. Sept. 27, 2022), the Federal Circuit affirmed in part and vacated in part the PTAB's judgment that claims 1-10, 13, and 14 of U.S. Patent No. 6,997,089 ("the '089 patent") were unpatentable as obvious.
Weber filed an IPR challenging Provisur's '089 patent directed to a weigh conveyor and an image processing system for classifying slices of cold cuts or other meat products. In its final written decision, the PTAB found that Weber had established that claims 1-10, 13, and 14 were unpatentable as obvious, but had failed to prove that claims 11 and 12 were unpatentable.
With respect to Provisur's appeal, the Federal Circuit first found that the PTAB did not abuse its discretion in denying Provisur's motion to exclude Weber's reply evidence. The Court found that the PTAB correctly concluded the evidence was directly responsive to Provisur's arguments and was highly probative. Next, the Federal Circuit found that the PTAB had failed to adequately explain how the prior art teaches or suggests the "surface-area" limitations. Specifically, the Court noted that the PTAB mischaracterized the parties' dispute as being limited to the digital imaging elements and, as a result, simply adopted Weber's arguments without addressing Provisur's arguments. The Court thus vacated the PTAB's judgment and remanded for the limited purpose of considering Provisur's surface-area limitation arguments.
With respect to Weber's cross-appeal, the Federal Circuit found that the PTAB erred in considering the teachings of one of the prior art references in isolation instead of in the context of Weber's asserted combination. The Court also found that the PTAB's analysis for claims 11 and 12 was inconsistent with its analysis of claims 2, 6, and 7. The Court noted that if the Board finds claims 2, 6, and 7 obvious on remand, claims 11 and 12 are also obvious.
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