Patentees Can Still Win in the US

Provisur Technologies, Inc. v. Weber, Inc., Docket No. 5:19-cv-06021 (W.D. Mo. Feb 22, 2019)


A jury has sided with Provisur and issued a $10 million verdict against its  food-processing machinery competitor Weber Maschinenbau. This is about half what Provisur requested.

The patents cover various various high-speed slicers, conveyors, and packaging equipment.  I spent a summer working on the line of a bacon packing factory and know how critical it is to have machinery that is speedy and safe, and works well even with variable inputs and poorly trained handlers.

Following a nine-day trial, an eight-member jury found claims from three of the four asserted patents infringed.  The Judge in the case is Stephen Bough, a 2014 Obama appointee.  In cases like these, Judge Bough generally seats a six-member jury with two alternates. (Under FRCP 48, the jury needs to have at least six jurors in order to render a verdict in civil cases). 

The jury also found the infringement willful. The patentee will likely use that willfulness verdict to request punitive damages.   In post-verdict motions, the defendant will likely renew its motion for Judgment as a Matter of Law. A key question is raised in the pre-verdict JMOL motion was whether the patentee is entitled to rely upon an Entire Market Value Rule to calculate damages rather than an apportionment approach.  The patentee also indicated in its pre-trial brief that it planned to also seek injunctive damages.  That equitable issue is decided by a judge rather than jury.

One interesting aspect of the verdict is that the jury was authorized to to decide the case on either literal infringement or under the doctrine of equivalents (DOE).  The verdict form did not, however, require the jury to distinguish between the two. Thus, the verdict can be upheld on either ground. I have included the jury instructions on DOE below.

The patentee was represented by Willkie Farr & Gallagher on a team led by Craig Martin.  Sterne Kessler represented the defendants.  This appears to be one of several ongoing patent battles between the two parties in US court, the PTAB, and abroad.

23 thoughts on “Patentees Can Still Win in the US

  1. 2

    I’m not sure I understand.

    Patentees regularly win in the US. Including in jury verdicts. Including verdict forms that don’t break out DoE vs literal infringement. There was another two days earlier, in SynQor, Inc. v. Vicor Corporation, 2:14-cv-00287 (EDTX).

    What makes this one special?

    1. 2.1

      See 1.1. Yes, “patentees regularly win in the US”, but that is an atypical comment on this blog. [Also, naturally, atypical of more legally-interesting cases discussed on patent blogs.] Not only in jury trials, but far more in pre-trial litigation-avoidance settlement payments. If it were not true we would not have those growing patent litigation investment funding businesses.

      1. 2.1.2

        When a patent system is working as it should, patent owners should win one time in four. How that then?

        Litigation to trial should be a last resort. I mean, it is for parties who both think they should win. That is when infringement Y/N is 50:50 and also the validity (of the assserted claim) is also a 50:50 issue. To win, a patent owner needs i) to win on infringement and ii) not to lose on validity. That’s just one square in a 2×2 matrix.

        All that makes a “strong” patent system, especially when, for most of the cases, everybody can see which way the two decisive questions will be answered by the court, whereby those cases settle before trial.


          How that then?

          Not as you portray.

          You presume a cause based on an (assumed) correlation.

          The error is easy to recognize. Just remind yourself that Efficient Infringers (large established companies) will gladly push well beyond your “50-50” point because — even at worst case — they may have to pay what they should have; and in the meantime they cause their opponents to divert (scarce) cash away from the business.

          This IS exactly why NPE’s were born, and why the “0h N0es Tr011s” propaganda is so well financed.


            As you say, anon. Large corporations have no conscience and will push ruthlessly until there is something that pushes them back, effectively. Unless a patent system is effective promptly to enjoin those who are infringing patents, it is not operating properly.

            The NPE business is one way to push back at the efficient infringer. But it’s not enough though, is it? Is the “efficient infringer” phenomenon a problem anywhere other than in the USA, I wonder.

            Here in Germany, for example, big companies protest that they are vulnerable to getting enjoined long before they can persuade any court to find the asserted claim invalid. Call it the “Efficient Enforcement” phenomenon if you will.


              Efficient Enforcement….?

              It costs to enforce.

              So while I will refrain from using my US prescription eyeglasses to “see” (and comment) on the choices of the German Sovereign, I will chide you again for being off in your comments as to the US Sovereign.

              After all, here, the presence and level of the presumption of validity IS supposed to mean something.


          Max, if only more U.S. patent litigation decisions were actually made on even that much logic.
          Also, your logic is falsely assuming that U.S. patent owners all do detailed validity and infringement analysis before bringing suit to accurately calculate the odds of actually winning, even though most defendants settle before either is actually decided, while only some defendants frequently refuse to settle as a matter of their corporate policy. Also, you are assuming that defendants also obtain, and act on, such rational analysis, even though it is quite expensive to obtain. And, this also falsely assuming that such rational analysis is being done independently of the lawyers who will be paid for the litigation by that deciding client.


            Well yes, I suppose I am assuming rather a lot. That might be because I was thinking of what a famous English patent judge said to an international audience of litigators about 20 years ago, here in Germany, to the effect that, in England, the courts are not to be looked upon as “a branch of social services” because litigation in England is seen as a last resort. He had in mind the civil law environment of mainland Europe, especially Germany.

            Different again, in the USA, it seems. I gather from what you write that the courts in your country are to be seen as a branch of “business services”.


            Max,… your logic is falsely assuming that U.S. patent owners all do detailed validity and infringement analysis before bringing suit…

            I do not think that this is a fair reading of Max’s 2.1.2. Max says that “[w]hen a patent system is working as it should,… [l]itigation to trial should be a last resort.” If that is not how it generally works in contemporary U.S. practice, that does not mean that Max is wrong. Rather, it merely means that our system is not presently working as it should.


              Max IS wrong but n thinking that IS as it should be.

              And that is in addition to his other errors.


              Indeed. But what about that “should”? Perhaps there is an interesting debate to be had, about whether society benefits if it imposes on those in a patent dispute an expectation that litigation shall be their last resort to end the dispute, for example by proportionately sanctioning those who use it as a first resort, and thereby waste the precious time of the court service of the involved jurisdiction. One might compare England with the USA, in this regard.


                Max, of course one reason there is far less concern about “wasting the precious time of the court services of the involved jurisdiction” in U.S. patent suits is that we do not have “loser pays” other than the “exceptional” cases in which attorney fee sanctions are awarded to the other party.

                1. Beyond that (and for the amount of time that MaxDrei spends on US patent law blogs, one would think that he would spend a little time informing himself), he might recognize that there is a Primary US Sovereign driver here: the right to petition for redress.

                  THIS is what the courts are FOR, and any (and I do mean ANY) attempt to demean or demonize those that would seek that path (noting that ‘choice should be of ‘last resort’ falls into that category) should be chided — and the parallel to the Efficient Infringer propaganda that enforcing one’s right (somehow) be ‘The Bad’ duly noted.

                2. Paul, I’m not sure about your “of course”. England has a loser pays rule but what the loser pays doesn’t pay for the Court Service of England and Wales. It’s the taxpayer that does that. Also in the USA, I guess. So in the end it’s the taxpayer in England and Wales who has an interest in restraining the growth of unnecessary civil litigation in the courts of England, the taxpayer who wants to see trial as a last resort to seek redress, not only in England but also (of course) in the USA.

                  If I’m wrong, feel free to put me straight.

                3. [T]he loser pays doesn’t pay for the Court Service of England and Wales. It’s the taxpayer that does that… So in the end it’s the taxpayer in England and Wales who has an interest in restraining the growth of unnecessary civil litigation in the courts of England… .

                  I used to think this way, but I am less certain of this line of thinking any more. Japan is a notably less litigious society than the U.S., and also a notably less economically productive society. Same goes for the the EU.

                  At first sight, litigation looks like a cost on a society, such that we would all be better off if litigation were avoided. It can hardly go unnoticed, however, that the U.S. is both (1) the wealthiest large country in the world and (2) one of the most litigious. Maybe this is a coincidence? It is hard to prove one way or the other.

                  On the other hand, maybe our litigiousness helps keep American businesses on their toes, and this in turn boosts our international competitiveness. Once again, it is hard to know. I merely urge folks to keep an open mind about the possibility that litigation is (up to a point) an advantage rather than a liability for a society and its taxpayers.

                4. Max, yes, but my point was that your “loser pays” attorney costs system makes filing patent suits more cost-risky in general, thereby more discouraging of lawsuits having low odds of trial success, which has the indirect effect of reducing your court systems burdens. Sorry if that was unclear.

  2. 1

    Too early to call AND that a patentee wins should not be a type of ‘exception’ that merits such a headline.

    1. 1.1

      Anon, you missed the significance of this patentee win being in “W.D. Mo.” I wonder if any of Dennis’ U-MO students attended?
      These patented machines may also refute the unflattering old comment that “nobody can slice baloney thinner than lawyers.”

      1. 1.1.1

        I missed no such “significance,” and both of my points are much more significant.

        Patent law should not be different in one location of the US to the next (even if one of those is near the good Prof.)

      1. 1.2.1

        Just hope they don’t get a panel with Dyk and Prost — they can kiss that patent and/or judgment goodbye.

        That point aside, an improvement to technology that goes back 50 years doesn’t mean much when most patents granted to modern tech are invalidated based upon Federal Circuit case law.

Comments are closed.