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When Slicing Evidence, It Must be Considered or Excluded

Posted by James Juo | Dec 01, 2023 | 0 Comments

USPTO Director Vidal vacated a final written decision by the Patent Trial and Appeal Board (“PTAB”) in Weber, Inc. v. Provisur Technologies, Inc., No. IPR2022-00599 (Nov. 29, 2023). The PTAB decision had found that claims 1–15 and 17 of U.S. Patent No. 8,408,109 B2 (“the `109 patent”), which pertains to a food slicing machine, were unpatentable as obvious by a preponderance of the evidence.

            The Board must decide dispositive issues properly before it, even if they are contrary to its ultimate conclusion. See Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1372 (Fed. Cir. 2023).

Director Vidal found that the PTAB had failed to address the evidence submitted by the patent owner, food processing equipment manufacturer Provisur, that allegedly supported its arguments on motivation to combine.

The PTAB's written decision stated that it did not rely on any of the contested evidence, and thus moot. But Director Vidal found that explanation did not adequately address the disputed evidence.

The Board could not, as the statement suggests, reject patent owner's arguments on motivation to combine without either considering the disputed evidence proffered by patent owner in support of those arguments or excluding that evidence. Having found the claims unpatentable as obvious, it was incumbent on the Board either to consider and address Patent Owner's properly submitted evidence, or to exclude the exhibits based on Petitioner's Motion to Exclude.

Director Vidal cautioned, however, that her decision here should not be mistaken as requiring that the Board must discuss every exhibit in the record or argument however cursory. See Parus Holdings, 70 F.4th at 1372 (noting that the Board does not have to “review evidence and issues introduced by a party in violation of its rules or not introduced at all”).

Thus, the inter partes review (“IPR”) was remanded to the PTAB to determine whether the evidence should be considered or excluded.

The patent attorneys at Thomas P. Howard, LLC enforce patents and defend against infringement in litigation nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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