Federal Circuit Slashes $10.5M Verdict, Citing Flaws in Infringement and Damages Rulings

In Provisur Technologies, Inc. v. Weber, Inc., No. 2023-1438 (Fed. Cir. Oct. 2, 2024), the Federal Circuit issued a mixed ruling, affirming infringement findings for two of three patents and reversing decisions on willfulness and damages.

Provisur accused Weber of infringing claims of three patents related to high-speed mechanical food slicers. A jury found Weber willfully infringed all three patents and awarded over $10 million in damages. Weber moved for judgment as a matter of law and a new trial. The district court denied both motions.

On appeal, the Federal Circuit reversed the jury’s findings of infringement for one of the patents at issue,[1] finding Provisur failed to proffer substantial evidence of infringement. While some evidence suggested it was possible to reconfigure Weber’s accused products in an infringing manner, no evidence of record demonstrated Weber’s products were sold in an infringing configuration or that they could be reprogrammed by its customers to activate such a configuration.

Regarding willfulness, the Federal Circuit found that the district court improperly admitted expert testimony regarding Weber’s purported failure to seek a freedom to operate analysis or other legal services from a third party, in violation of 35 U.S.C. § 298. The remaining evidence, while admissible, failed to establish Weber’s specific intent to infringe as a matter of law.

Finally, the Federal Circuit found that the district court improperly permitted Provisur to use the “entire market value rule” for damages, rather than calculate a reasonable royalty based on apportionment between infringing and non-infringing features of Weber’s products. Weber’s systems included several non-infringing features—some of which Weber itself patented—and Provisur’s expert offered no evidence that Provisur’s patented features alone drove customer demand for Weber’s entire slicing systems or substantially created its value. The case was remanded for a new trial on damages.

Endnotes

[1] Weber conceded infringement of the remaining two patents during oral argument due to an intervening decision.