The Federal Circuit recently issued a significant ruling in Provisur Technologies, Inc. v. Weber, Inc., addressing key issues in patent infringement, willfulness, and damages. The case involved Provisur’s patents covering food-processing machinery and Weber’s alleged infringement of those patents. The court’s decision clarifies several critical aspects of patent law, particularly in the areas of infringement standards, willfulness, and the use of the entire market value rule in determining damages.

Background of the Case

Provisur sued Weber for willful infringement of three patents—U.S. Patent Nos. 10,625,436; 10,639,812; and 7,065,936—related to food-slicing and packaging machinery. The jury found that Weber willfully infringed multiple claims of the patents, awarding Provisur over $10.5 million in damages. Weber appealed, challenging the district court’s rulings on infringement, willfulness, and damages.

Key Legal Issues and Rulings

1. Patent Infringement: Affirming and Reversing Jury Findings

The court upheld the jury’s finding that Weber infringed the ’812 and ’436 patents but reversed the finding of infringement for the ’936 patent. A crucial issue was whether Weber’s SmartLoader product met the claimed “advance-to-fill” limitation. The court determined that Provisur failed to present sufficient evidence showing that the SmartLoader was readily configurable to operate in an infringing manner. Since customers did not have access to the necessary settings to modify the device for infringement, the court found no basis for the jury’s infringement determination on the ’936 patent and reversed that finding.

2. Willful Infringement: Reversing the Jury’s Verdict

For willfulness, the court held that the district court erred in admitting testimony that violated 35 U.S.C. § 298, which prohibits using an infringer’s failure to obtain legal advice as evidence of willfulness. Provisur’s expert improperly suggested that Weber’s lack of a legal opinion on infringement indicated willful intent. The court also found that the remaining evidence, including Weber’s internal patent-tracking matrix, did not establish specific intent to infringe. Consequently, the court reversed the willfulness finding.

3. Damages: Rejecting the Entire Market Value Rule

One of the most significant aspects of the ruling was the rejection of Provisur’s use of the entire market value rule (EMVR) to calculate damages. Under patent law, a patentee must apportion damages to the infringing feature unless they can prove that the patented feature drives demand for the entire product. The court found that Provisur’s expert testimony failed to provide any substantive evidence that the patented features were the primary drivers of customer demand. Because the slicing line included multiple components beyond the patented features, and no consumer surveys or market studies supported Provisur’s claims, the court ruled that applying the entire market value rule was inappropriate. As a result, the court ordered a new trial on damages.

Implications of the Decision

This ruling provides several important takeaways for patent litigation:

• Clarifies Readily Configurable Standard: To prove infringement, a plaintiff must show that an accused device is not just theoretically capable of infringement but is readily configurable to infringe.
• Limits Willfulness Arguments: The decision reinforces the restrictions of 35 U.S.C. § 298, preventing patentees from arguing willfulness based on an infringer’s failure to obtain legal advice.
• Restricts Use of the Entire Market Value Rule: Patent holders seeking substantial damages must provide concrete evidence, such as customer demand studies, to justify using the entire product’s value as the royalty base.

Conclusion

The Federal Circuit’s decision in Provisur v. Weber underscores the importance of rigorous evidentiary standards in proving infringement, willfulness, and damages. The ruling provides much-needed clarity on the application of the entire market value rule and reinforces limitations on willfulness claims under § 298. As the case proceeds on remand for a new trial on damages, it will serve as an important reference for patent litigators navigating similar disputes in high-stakes intellectual property cases.

Here is a link to a brief written on willful infringement.

By Charles Gideon Korrell