Provisur Techs., Inc. v. Weber, Inc
Authored by: Jeremy J. Gustrowsky
A recent appellate decision has clarified several important issues in patent law, particularly around proving infringement, willful infringement, and calculating damages. The case involved Provisur Technologies, Inc., which owns several patents related to food-processing machinery, including U.S. Patent Nos. 10,625,436, 10,639,812, and 7,065,936. Provisur accused Weber, Inc. of infringing these patents with its food slicers and SmartLoader products, leading to a jury verdict in Provisur’s favor and a substantial damages award.
However, the appeals court found that Provisur did not provide enough evidence to support its claim that Weber’s SmartLoader infringed claim 14 of U.S. Patent No. 7,065,936. The court explained that for a product to infringe based on its capability, it must be “readily configurable” to operate in the infringing manner by customers—not just by experts with special access. In this case, the evidence showed that only Weber’s technicians, not customers, could access the necessary settings to make the SmartLoader operate in the allegedly infringing way. As a result, the court reversed the infringement finding for this patent claim.
The court also addressed the issue of willful infringement, which can lead to enhanced damages. It held that Provisur’s evidence—primarily that Weber knew about the patents and tracked them in a database—was not enough to show that Weber specifically intended to infringe. Additionally, the court found that Provisur’s expert improperly suggested that Weber’s failure to seek legal advice could be used as evidence of willfulness, which is prohibited by law.
Finally, the court ruled that the damages awarded to Provisur were improperly calculated. Provisur used the value of the entire food slicing line as the basis for its royalty calculation, but failed to prove that the patented features were the main reason customers bought the whole system. The court emphasized that damages must be tied to the value of the patented feature, not the entire product, unless the patented feature drives customer demand. Because Provisur did not provide sufficient evidence on this point, the court ordered a new trial on damages.