Provisur Technologies, Inc. v. Weber, Inc.

Case: 23-1438    Document: 67     Page: 1    Filed: 10/02/2024




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

          PROVISUR TECHNOLOGIES, INC.,
                 Plaintiff-Appellee

                             v.

   WEBER, INC., TEXTOR, INC., WEBER FOOD
      TECHNOLOGY GMBH, FKA WEBER
 MASCHINENBAU GMBH BREIDENBACH, TEXTOR
           MASCHINENBAU GMBH,
             Defendants-Appellants
            ______________________

                        2023-1438
                  ______________________

    Appeal from the United States District Court for the
 Western District of Missouri in No. 5:19-cv-06021-SRB,
 Judge Stephen R. Bough.
                 ______________________

                 Decided: October 2, 2024
                 ______________________

     CRAIG C. MARTIN, Willkie Farr & Gallagher LLP, Chi-
 cago, IL, argued for plaintiff-appellee. Also represented by
 MICHAEL BABBITT, REN-HOW HARN, SARA TONNIES
 HORTON, HENRY CROSS THOMAS.

     WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox
 PLLC, Washington, DC, argued for defendants-appellants.
 Also represented by DONALD BANOWIT, KRISTINA CAGGIANO
 KELLY, RICHARD CRUDO, DANIEL YONAN.
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 2                PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




                   ______________________

  Before MOORE, Chief Judge, TARANTO, Circuit Judge, and
                 CECCHI, District Judge. 1
 MOORE, Chief Judge.
     Weber, Inc., Textor, Inc., Weber Maschinenbau GmbH
 Neubrandenburg, Textor Maschinenbau GmbH, and We-
 ber Maschinenbau Breidenbach (collectively, Weber) ap-
 peal the United States District Court for the Western
 District of Missouri’s denial of judgment as a matter of law
 of noninfringement and no willfulness of claims 9–12 and
 16 of 

U.S. Patent No. 10,625,436,

 claims 1, 7, and 8 of 

U.S. Patent No. 10,639,812,

 and claim 14 of 

U.S. Patent No. 7,065,936

. Weber also appeals the denial of a motion for a
 new trial on infringement, willfulness, and damages. For
 the following reasons, we affirm-in-part, reverse-in-part,
 and remand for further proceedings.
                        BACKGROUND
      Provisur Technologies, Inc. (Provisur) owns the ’436,
 ’812, and ’936 patents, which generally relate to food-pro-
 cessing machinery. The ’436 and ’812 patents, which share
 a common specification, relate to high-speed mechanical
 slicers used in food-processing plants to slice and package
 food articles, such as meats and cheeses. ’812 patent at
 Abstract. Figure 1B, annotated below, illustrates the
 slicer, which contains a food article loading apparatus
 (blue) with a lift tray assembly (220) into which food is
 placed. 

Id.

 at 4:33–43. The lift tray pivots upward and the
 grippers (green), which are located on the food article feed




     1   Honorable Claire C. Cecchi, District Judge, United
 States District Court for the District of New Jersey, sitting
 by designation.
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                  3



 apparatus (yellow), guide the food forward for slicing. 

Id.

 at 4:33–43, 9:60–10:4.




 Appellants Op. Br. at 12.
      The ’936 patent relates to a fill and packaging appa-
 ratus for loading sliced foods into packages. ’936 patent at
 Abstract. Figure 1 illustrates a slicing and packaging line.
 

Id.

 at 3:20–21, Fig. 1. The slicing machine (20) “cuts slices
 from a loaf and deposits the slices on an output conveyor
 assembly” (30). 

Id.

 at 3:39–42. The conveyor assembly (30)
 moves drafts of the appropriate weight onto a staging con-
 veyor (44). 

Id.

 at 3:50–58. The staging conveyor (44) deliv-
 ers the rows of drafts onto a shuttle conveyor (52), which
 delivers the drafts into pockets made of film. 

Id.

 at 3:59–
 4:6.
      The ’936 patent describes two alternative ways to fill
 the pockets: retract-to-fill and advance-to-fill. The retract-
 to-fill embodiment begins with the shuttle conveyor in the
 extended position and fills the pockets starting farthest
 from the slicer until the conveyor is fully retracted. 

Id.

 at
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 4                PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 5:33–38. The claims covering the retract-to-fill embodi-
 ment, unasserted claims 1–4, 6–13, and 15–20, were found
 invalid over the prior art. Provisur Techs., Inc. v. Weber,
 Inc., No. 21-1851, 

2022 WL 17688071

, at *5 (Fed. Cir. Dec.
 15, 2022). The asserted claim covers the advance-to-fill
 embodiment. The advance-to-fill embodiment begins with
 the shuttle conveyor in the retracted position and fills the
 pockets closest to the slicer and advances until the con-
 veyor is fully extended. ’936 patent at 5:39–44. The anno-
 tated figure below shows the advance-to-fill embodiment.




 Appellants Op. Br. at 17.
     Claim 14, the only asserted claim for the ’936 patent,
 recites:
     14. The apparatus according to claim 10, wherein
     said shuttle conveyor is configured to fill plural
     rows of pockets while said web is stationary in said
     fill station, and said shuttle conveyor is configured
     to retract from an extended position to a retracted
     position to fill a new first row of a group of empty
     pockets while said web advances to locate a suc-
     ceeding plural row of pockets in said fill station.
     Relevant to this appeal, Provisur sued Weber for will-
 fully infringing the ’812, ’436, and ’936 patents. Provisur
 alleged Weber’s 905, 906, 908, and S6 food slicers infringed
 the ’812 and ’436 patents and Weber’s SmartLoader prod-
 ucts infringed the ’936 patent.
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                  5



      A jury trial was held in October 2022. The jury found
 Weber willfully infringed claims 9–12 and 16 of the ’436
 patent, claims 1, 7, and 8 of the ’812 patent, and claim 14
 of the ’936 patent. J.A. 61–62. 2 The jury awarded Provisur
 $3,013,068 for the ’936 patent, $3,747,046.50 for the ’436
 patent, and $3,747,046.50 for the ’812 patent. J.A. 63. Fol-
 lowing the verdict, Weber moved for judgment as a matter
 of law (JMOL) on the issues of infringement and willful-
 ness, and a new trial on infringement, willfulness, and
 damages, but the district court denied both motions. J.A.
 69–72. 3
     Weber appealed. We have jurisdiction under 

28 U.S.C. § 1295

(a)(1).
                         DISCUSSION
     We review a district court’s grant or denial of JMOL
 under the standard of the regional circuit. Apple Inc. v. Wi-
 LAN Inc., 

25 F.4th 960, 969

 (Fed. Cir. 2022). The Eighth
 Circuit reviews JMOL rulings de novo, applying the same
 standard as the district court. Penford Corp. v. Nat’l Union
 Fire Ins. Co. of Pittsburgh, PA, 

662 F.3d 497, 503

 (8th Cir.
 2011). “A court may render judgment as a matter of law
 when there is no legally sufficient evidentiary basis for a
 reasonable jury to find for the nonmoving party on an issue
 and all of the evidence directs against a finding for the non-
 moving party.” Jones v. TEK Indus., Inc., 

319 F.3d 355, 358

 (8th Cir. 2003).




     2   The jury also found no infringement of claim 12 of
 

U.S. Patent No. 6,997,089

. J.A. 61. This issue is not before
 us.
      3  The district court also granted Provisur’s motion
 for enhanced damages, doubling the jury’s award. J.A. 73–
 86. This issue is not before us.
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 6                PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




                      I.     INFRINGEMENT
     Infringement is a question of fact that is reviewed for
 substantial evidence when tried to a jury. Lucent Techs.,
 Inc. v. Gateway, Inc., 

580 F.3d 1301, 1309

 (Fed. Cir. 2009).
 “A factual finding is supported by substantial evidence if a
 reasonable jury could have found in favor of the prevailing
 party in light of the evidence presented at trial.” Godo Kai-
 sha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., 

967 F.3d 1380, 1383

 (Fed. Cir. 2020).
      With respect to the ’812 and ’436 patents, Weber con-
 ceded its noninfringement arguments are no longer availa-
 ble in this appeal in light of an intervening decision. 4 Rule
 28(j) Citation of Supplemental Authority, No. 23-1438
 (Fed. Cir. Apr. 1, 2024), ECF No. 57 (citing Weber, Inc. v.
 Provisur Techs., Inc., 

92 F.4th 1059

 (Fed. Cir. 2024)); see
 also Oral Arg. at 0:51–4:05, https://oralarguments.cafc.
 uscourts.gov/default.aspx?fl=23-1438_06052024.mp3. We
 therefore affirm the district court’s denial of JMOL for non-
 infringement for the ’812 and ’436 patents.
      With respect to the ’936 patent, the jury found Weber’s
 SmartLoader infringes claim 14. J.A. 61. After post-trial
 briefing, the district court determined Weber was not enti-
 tled to judgment as a matter of law or a new trial. J.A. 70–
 71. Weber contends the district court erred in denying
 JMOL for noninfringement because Provisur failed to
 prove Weber’s SmartLoader satisfies the claimed advance-
 to-fill limitation. Appellants Op. Br. at 43–54.
    Claim 14 requires an advance-to-fill conveyor. J.A.
 30862. The record indisputably shows Weber’s Smart-
 Loader is sold to customers as a retract-to-fill conveyor.


     4   Weber’s concession of infringement for purposes of
 this appeal should have no impact on the pending inter
 partes review, which could affect liability in this case on
 remand.
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                 7



 J.A. 66993; J.A. 42045 (Trial Tr. 1559:5–15), J.A. 41439
 (Trial Tr. 953:12–14); J.A. 89412. There are no pictures or
 videos showing the SmartLoader operating as an advance-
 to-fill conveyor. Provisur’s expert Dr. Keith Vorst conceded
 as much. J.A. 41441, 41443 (Trial Tr. 955:7–12, 957:8–16).
 He also admitted he found no evidence that any Weber cus-
 tomer ever used the SmartLoader to operate as an ad-
 vance-to-fill conveyor. J.A. 41443 (Trial Tr. 957:21–25).
      Provisur’s infringement theory relied on establishing
 Weber’s SmartLoader could be reprogrammed to operate as
 an advance-to-fill conveyor. Provisur did not proffer suffi-
 cient evidence to meet its burden. Dr. Vorst testified the
 SmartLoader can be configured to operate as an advance-
 to-fill conveyor by manipulating certain parameters of the
 conveyor. J.A. 41396 (Trial Tr. 910:10–13). He testified
 the SmartLoader includes a human machine interface
 (HMI) that allows someone to create a new program and
 adjust the parameters of the conveyor to advance or retract
 it. J.A. 41396–400 (Trial Tr. 910:18–913:14, 914:6–10). He
 specifically relied on a demonstrative of the HMI screens
 that allegedly enable configuration of these parameters
 (shown below). J.A. 41396–400 (Trial Tr. 910:18–913:14).
 Dr. Vorst testified that by adjusting parameters, such as
 the front and rear position, the SmartLoader can be
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 8                PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 configured as an advancing conveyor. J.A. 41400 (Trial Tr.
 914:6–10).




 J.A. 93782.
      “An accused device may be found to infringe if it is rea-
 sonably capable of satisfying the claim limitations.” Hil-
 graeve Corp. v. Symantec Corp., 

265 F.3d 1336, 1343

 (Fed.
 Cir. 2001). “But a device does not infringe simply because
 it is possible to alter it in a way that would satisfy all the
 limitations of a patent claim.” High Tech Med. Instrumen-
 tation, Inc. v. New Image Indus., Inc., 

49 F.3d 1551, 1555

 (Fed. Cir. 1995). We have held an accused device to meet
 the capability standard if it is readily configurable to in-
 fringe.     See, e.g., Fantasy Sports Props., Inc. v.
 Sportsline.com, Inc., 

287 F.3d 1108

, 1118 (Fed. Cir. 2002)
 (explaining the accused device infringes where the user
 must only activate the functions already present); Finjan,
 Inc. v. Secure Computing Corp., 

626 F.3d 1197, 1205

 (Fed.
 Cir. 2010) (same).
     Here, Provisur proffered no evidence that Weber’s cus-
 tomers could readily activate the alleged advance-to-fill
 functionality. Dr. Vorst testified about configuring the
 SmartLoader through the HMI, but he had access to
 screens that Weber’s customers do not. Indeed, Dr. Vorst
 explained that during his inspection he had to ask Weber
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                  9



 technicians for permission to access certain HMI screens.
 J.A. 41259–60 (Trial Tr. 773:19–774:2); see also J.A.
 41403–04 (Trial Tr. 917:16–918:9). Dr. Vorst further testi-
 fied that at least two of these screens, including the screens
 for configuring the rear and front position of the loading
 conveyor and for configuring the products positions, are
 necessary to reconfigure the SmartLoader to advance-to-
 fill. J.A. 41404 (Trial Tr. 918:13–19). But Weber’s source
 code expert Dr. Valerdi testified that only one screen of the
 HMI is available to Weber’s customers. J.A. 41893–94
 (Trial Tr. 1407:19–1408:23 (“Q: And so just which of these
 four screens is available to the customer? A: Only the bot-
 tom right screen that has the configurable number of load-
 ings and some adjustment parameters. That’s the only one
 that’s available to a customer of Weber.”)). Weber’s tech-
 nical expert Dr. Reinholtz similarly testified that most of
 the HMI screens are only available to Weber’s service tech-
 nicians, but not customers. J.A. 42133 (Trial Tr. 1647:2–
 6); see also J.A. 42121 (Trial Tr. 1635:2–5). The screens
 required to reconfigure the SmartLoader according to Dr.
 Vorst’s theory are not available to Weber’s customers.
      This is not an infringement scenario where customers
 can simply activate the infringing configuration. See Fan-
 tasy Sports, 287 F.3d at 1118; Finjan, 

626 F.3d at 1205

. Dr.
 Vorst is an expert who was provided access to Weber’s
 products during an inspection. Weber’s customers do not
 have access to the screens Provisur contends are necessary
 for the SmartLoader to be reconfigured to operate as an ad-
 vance-to-fill conveyor. Only Weber and its technicians
 have access to the configurable parameters. Provisur has
 not identified any evidence in the record that puts this fact
 genuinely in dispute. Given these facts, Weber’s Smart-
 Loader is not readily configurable to infringe claim 14 of
 the ’936 patent. The SmartLoader can only infringe if We-
 ber modifies it to operate as an advance-to-fill conveyor.
     Even with access provided by Weber, Dr. Vorst only
 testified that he could have reconfigured the SmartLoader.
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 10               PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 He did not testify that he was able to configure it to ad-
 vance-to-fill. See J.A. 41441 (Trial Tr. 955:7–12), J.A.
 42542 (Trial Tr. 2056:19–22), J.A. 43386 (Provisur’s oppo-
 sition to Weber’s motion for a new trial). Dr. Vorst pro-
 vided no evidence Weber’s SmartLoader ever was
 configured to advance-to-fill and no evidence that he con-
 figured it to advance-to-fill. He admitted as much, explain-
 ing that he was unable to demonstrate the advance-to-fill
 configuration because he ran out of time. J.A. 41441–43
 (Trial Tr. 955:7–12, 956:21–957:16). And Provisur did not
 request additional inspections. J.A. 41443 (Trial Tr.
 957:18–20).
     Dr. Vorst’s testimony is therefore not substantial evi-
 dence demonstrating Weber’s SmartLoader infringes claim
 14 of the ’936 patent. The district court erred in denying
 Weber’s motion for judgment as a matter of law for nonin-
 fringement for claim 14 of the ’936 patent. We therefore
 reverse the district court’s denial of judgment as a matter
 of law for noninfringement of claim 14 of the ’936 patent
 and remand for further proceedings.
                      II.    WILLFULNESS
     Willful infringement is a question of fact reviewed for
 substantial evidence following a jury trial. Polara Eng’g
 Inc v. Campbell Co., 

894 F.3d 1339, 1353

 (Fed. Cir. 2018).
 “To establish willfulness, a patentee must show that the
 accused infringer had a specific intent to infringe at the
 time of the challenged conduct.” BASF Plant Sci., LP v.
 Commonwealth Sci. and Indus. Rsch. Org., 

28 F.4th 1247

,
 1274 (Fed. Cir. 2022).
     Weber appeals the district court’s denial of JMOL of no
 willfulness. Specifically, Weber contends the district court
 erred in admitting testimony in violation of 

35 U.S.C. § 298

, and the remaining evidence is insufficient to support
 the jury’s verdict of willful infringement. We agree.
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                  11



     Section 298 states:
     The failure of an infringer to obtain the advice of
     counsel with respect to any allegedly infringed pa-
     tent, or the failure of the infringer to present such
     advice to the court or jury, may not be used to prove
     that the accused infringer willfully infringed the
     patent or that the infringer intended to induce in-
     fringement of the patent.
 Patentees are prohibited from using the accused infringer’s
 failure to obtain the advice of counsel as an element of proof
 that the accused infringer willfully infringed.
     Prior to trial, Weber moved to exclude testimony from
 Provisur’s expert, Mr. John White, that Provisur asserted
 willful infringement based in part on Weber’s failure to
 present evidence of advice of counsel. J.A. 6. The district
 court granted Weber’s motion to exclude Mr. White’s testi-
 mony on Weber’s alleged failure to obtain advice of counsel.
 J.A. 8.
      During trial, however, Mr. White testified about We-
 ber’s failure to consult a third party to evaluate the alleg-
 edly infringed patents. J.A. 41138–43 (Trial Tr. 652:17–
 657:8). Specifically, Mr. White testified that Weber did not
 provide any evidence that it performed a number of evalu-
 ation steps, such as a freedom to operate analysis. J.A.
 41140–41 (Trial Tr. 654:24–655:5). In his expert report,
 Mr. White explained a freedom to operate analysis is “typ-
 ically reviewed by a qualified patent attorney” which may
 include “‘opinions’ as to which patents may be problem-
 atic.” J.A. 9040–41 ¶ 57. Mr. White’s testimony referenced
 other potentially legal services that Weber allegedly failed
 to seek.
     Mr. White’s testimony violated 

35 U.S.C. § 298

. Provi-
 sur argues Mr. White’s testimony is about industry stand-
 ards for intellectual property management. Appellee Br.
 41. But Mr. White, an attorney, did not distinguish
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 12               PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 between legal and non-legal services when testifying about
 consulting a third party. Provisur cannot circumvent § 298
 by substituting advice from a third party for advice of coun-
 sel. The district court thus erred in admitting the portion
 of Mr. White’s testimony related to seeking advice from a
 third party.
     The remainder of Mr. White’s testimony is admissible,
 but insufficient as a matter of law to establish willfulness.
 Mr. White testified about Weber’s patent matrix that
 tracked patents in related food processing technologies, in-
 cluding the asserted patents. J.A. 41112 (Trial Tr. 626:11–
 21). He explained software and Weber personnel provided
 a rating out of 3 for each patent in the matrix. Id. These
 ratings were described as indicating whether the patent
 was relevant for purposes of further evaluation. J.A. 41113
 (Trial Tr. 627:3–16). For the asserted patents, Mr. White
 testified each one was provided a high score of 3. J.A.
 41127 (Trial Tr. 641:8–16) (’936 patent), J.A. 41130–31
 (Trial Tr. 644:23–645:17) (’812 patent), J.A. 41136–37
 (Trial Tr. 650:19–651:5) (’436 patent).
      At most, the patent matrix demonstrates Weber’s
 knowledge of the asserted patents and their relevance to
 Weber’s business in general. The patent matrix and corre-
 sponding testimony do not provide any level of specificity
 as to the relevance of the tracked patents for any of Weber’s
 products. There is no dispute Weber knew of the asserted
 patents. J.A. 31387–88. The issue here is whether Weber
 knew of its alleged infringement and had a specific intent
 to infringe. BASF Plant Sci, 28 F.4th at 1274. There is no
 evidence Weber knew of its alleged infringement. We have
 held “knowledge of the asserted patent and evidence of in-
 fringement is necessary, but not sufficient, for a finding of
 willfulness.” Bayer Healthcare LLC v. Baxalta Inc., 

989 F.3d 964, 988

 (Fed. Cir. 2021). Provisur’s evidence as a
 matter of law is not enough to establish deliberate or inten-
 tional infringement. 

Id.

 The district court should have
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                  13



 granted Weber’s motion for judgment as a matter of law.
 We reverse the district court’s willfulness finding.
                         III.   DAMAGES
      When reviewing damages, we apply the law of the re-
 gional circuit. Exmark Mfg. Co. Inc. v. Briggs & Stratton
 Power Prods. Grp., LLC, 

879 F.3d 1332, 1347

 (Fed. Cir.
 2018). The Eighth Circuit reviews a denial of a motion for
 a new trial on damages for abuse of discretion. See Harri-
 son v. Purdy Bros. Trucking Co., 

312 F.3d 346, 351

 (8th Cir.
 2002). Evidentiary rulings, including the admissibility of
 damages expert evidence, are also reviewed for abuse of
 discretion. See Barrett v. Rhodia, Inc., 

606 F.3d 975, 980

 (8th Cir. 2010). “A district court abuses its discretion when
 its decision is based on clearly erroneous findings of fact, is
 based on erroneous interpretations of the law, or is clearly
 unreasonable, arbitrary or fanciful.” Whitserve, LLC v.
 Comput. Packages, Inc., 

694 F.3d 10, 26

 (Fed. Cir. 2012).
     The jury awarded Provisur about $10.5 million in the
 form of a reasonable royalty. J.A. 63. Provisur accused
 certain features on Weber’s slicers and SmartLoader of in-
 fringement. These features are parts of a larger compo-
 nent, either the slicer or automation component, which
 themselves are each just one component of an entire mul-
 ticomponent slicing line (see below).
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 14               PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 Appellant Op. Br. at 62.
     The damages verdict rests on Provisur’s reliance on the
 entire market value rule. Weber argues the district court
 erred by permitting Provisur to use the entire market value
 rule. We agree. The district court abused its discretion
 and should have granted a new trial on damages.
      “A patentee is only entitled to a reasonable royalty at-
 tributable to the infringing features.” Power Integrations,
 Inc. v. Fairchild Semiconductor Int’l, Inc., 

904 F.3d 965, 977

 (Fed. Cir. 2018). We have required any royalties be
 apportioned between infringing and noninfringing features
 of the accused product. 

Id.

 An apportionment analysis
 generally requires determining a royalty base to which a
 royalty rate will be applied. 

Id.

 For elements of multi-
 component products accused of infringement, the royalty
 base should be based on the smallest salable patent-prac-
 ticing unit. LaserDynamics, Inc. v. Quanta Comput., Inc.,
 

694 F.3d 51, 67

 (Fed. Cir. 2012). A necessary condition for
 using “an entire multi-component product” as the base is
 that the patentee proves the patented feature is the basis
 for customer demand. Id.; see also Lucent Techs., Inc. v.
 Gateway, Inc., 

580 F.3d 1301, 1336

 (Fed. Cir. 2009).
     Provisur’s use of the entire market value rule was im-
 permissible because it failed to present sufficient evidence
 demonstrating the patented features drove the demand for
 the entire slicing line. Provisur’s damages expert, Ms. Ju-
 lie Davis, used the value of the entire slicing line as the
 royalty base and applied a royalty rate to calculate the rea-
 sonable royalty damages.        J.A. 41524–27 (Trial Tr.
 1038:16–1041:22). Ms. Davis relied on Dr. Vorst’s testi-
 mony to support using the entire market value as the roy-
 alty base. J.A. 41554–55 (Trial Tr. 1068:3–1069:1). Dr.
 Vorst testified that the patented features drive the demand
 or substantially create the value of Weber’s accused prod-
 ucts. J.A. 41310 (Trial Tr. 824:17–24). But Dr. Vorst’s tes-
 timony was conclusory and did not provide any evidence,
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 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.                15



 e.g., evidence from customers, to show the patented fea-
 tures drove the demand for the entire slicing line.
      For example, for the ’812 and ’436 patents, Dr. Vorst
 testified that various features on the slicing machines are
 considered conventional, and the patented features are
 unique selling points. J.A. 41311–12 (Trial Tr. 825:2–
 826:19). The “conventional” features he discusses include
 the slicing blade, guards, conveyors, and other components
 of the slicer. 

Id.

 His testimony does not explain why these
 “conventional” features do not provide any value or drive
 customer demand. 5
     Provisur failed to proffer sufficient evidence that other
 features of the slicing line do not cause customers to pur-
 chase the accused products. On cross-examination, Dr.
 Vorst agreed that Weber has patents that cover the fea-
 tures of its slicing lines. J.A. 41445–46 (Trial Tr. 959:24–
 960:11). He also agreed that Weber’s customers buy slicing
 lines for different reasons. J.A. 41447–48 (961:24–962:10).
 Dr. Vorst did not conduct any market studies or consumer
 surveys to determine whether the demand for Weber’s



     5   For the ’936 patent, infringement of which is no
 longer at issue for damages purposes, see supra, Dr. Vorst’s
 testimony was similarly conclusory and only states the con-
 figurable feature of the SmartLoader as substantially cre-
 ating the value of Weber’s slicing lines. J.A. 41406 (Trial
 Tr. 920:3–7). Asserted claim 14, however, only covers an
 advance-to-fill conveyor, not any configuration of a smart
 conveyor. J.A. 30862. Additionally, Dr. Vorst does not
 point to any evidence of Weber or Weber’s customers using
 the device in an infringing manner. It is inconceivable how
 the advance-to-fill conveyor feature is a driver of customer
 demand where Weber’s customers have not used the fea-
 ture.
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 16               PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.




 slicing lines was driven by the patented features. There is
 simply no evidence at all that the patented features drove
 customer demand or substantially created the value of the
 entire slicing lines. No one type of evidence is needed to
 show the patented features drove customer demand, but
 here there is none. We have explained that “[w]hen the
 product contains other valuable features, the patentee
 must prove that those other features do not cause consum-
 ers to purchase the product.” Power Integrations, 

904 F.3d at 979

. The district court should have granted a new trial
 on damages because there is no evidence, apart from con-
 clusory expert testimony, that supports invoking the entire
 market value rule. While expert testimony alone may be
 sufficient, in this case, where the entire slicing line in-
 cludes multiple separate machines (see Figure above) from
 the preparation machinery to the slicing machinery to the
 automation machinery to the packaging machinery to the
 end-of-line machinery, and the patented technology is just
 one small component of one of the machines, and no other
 evidence supports the notion that this small component of
 just one portion of such a large system ever drove customer
 demand, it was an abuse of discretion to allow this case to
 proceed on the entire market value rule. We therefore re-
 verse the district court’s denial of a new trial on damages.
                         CONCLUSION
      We have considered the parties’ remaining arguments
 and find them unpersuasive. We affirm the district court’s
 denial of judgment as a matter of law of noninfringement
 with respect to the ’812 and ’436 patents and reverse the
 denial as to the ’936 patent. We reverse the district court’s
 denial of judgment as a matter of law of willfulness. We
 reverse the district court’s denial of a new trial on damages.
 We remand for further proceedings consistent with this de-
 cision.
   AFFIRMED-IN-PART, REVERSED-IN-PART, AND
                 REMANDED
Case: 23-1438   Document: 67     Page: 17     Filed: 10/02/2024




 PROVISUR TECHNOLOGIES, INC. v. WEBER, INC.               17



                           COSTS
 Costs awarded to Weber.