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A Federal Circuit panel appeared wary Wednesday of Provisur Technologies Inc.'s argument that Weber Inc. knew it was infringing its patents for meat slicing and packaging machines, the basis for a $10.5 million judgment against Weber last year.

Weber argues that, at the very least, the lower court's finding of willfulness should be vacated. Much of the oral argument also revolved around whether Provisur's experts could adjust the Weber machine's settings to make it work like Provisur's without the help of Weber technicians.

The Weber machines were built to slice the meat and move it to an extended conveyor that then retracts to fill the packaging pockets with the slices. A key claim in Provisur's patent applies to a conveyor that moves forward to drop the sliced food into the pockets.

Provisur argues that end users can reconfigure Weber machines to make them advance-to-fill like Provisur's, which constitutes infringement. Weber, however, contends that such a switch could only be made by a Weber technician.

U.S. Circuit Judge Kimberly A. Moore pointed out to Craig Martin of Willkie Farr & Gallagher LLP, counsel for Provisur, that its expert, Keith Vorst, was able to configure the Weber machine to advance fill the pockets only when using a settings screen that's inaccessible to users.

"Only a Weber technician or the Weber factory can alter the prior to delivery. ... But you the user can't do that," Judge Moore told Martin. "That's the testimony of record, so how is this device therefore configurable such that a user could utilize it in an infringing way?"

Martin replied that Vorst testified "repeatedly" that he was able to use the machine's interface to reconfigure the machine to advance to fill.

"His testimony was, 'I used the ... screen to easily configure this in an advance-to-fill mode.' And that's what he testified to," Martin said. "Nobody cross-examines him and says 'you have to go beyond a wall' or 'you have to ... have a technician there.'"

Beyond that, he said, there was no dispute at trial about whether an end user could reconfigure the machines.

But Judge Moore pointed out that another expert testified that the screens used to reconfigure the setting aren't available to Weber customers. And Weber's attorney, William Milliken of Sterne Kessler Goldstein & Fox PLLC, said Vorst himself said that the settings needed to reconfigure the machine to advance are only available to Weber technicians.

"In order to have infringement for an apparatus capability, you've got to show reasonable capability, which means it would infringe without some kind of unforeseen modification in the ordinary course. And Weber's customers don't have access to this," Milliken said.

At a minimum, Weber is asking the court to vacate U.S. District Judge Stephen R. Bough's judgment of willful infringement. Judge Bough wrote that Weber "intentionally copied plaintiff's patented ideas."

But Martin told the panel there was "overwhelming" evidence to support Judge Bough's willfulness finding, including interrogatory responses from Weber executives that — despite changing multiple times — indicated that the company was aware of Provisur's patents.

"The evidence clearly showed that Weber knew about the patents, that many of their senior executives, including their CEO, had rated the patents ... for relevance," Martin said.

U.S. Circuit Judge Richard G. Taranto said that there wasn't evidence that Weber executives' patent rating meant that they knew their product was infringing. And Judge Moore said Weber's awareness of the patents doesn't mean the company was aware that its "smart loader" was infringing it.

Martin argued that the testimony from Weber executives changed as the proceeding progressed, creating a significant "credibility contest." He also pointed to testimony from Provisur's willfulness expert, John White, who laid out the steps that companies go through to assess a patent related to their products.

"He goes through the steps that you'd have to go through in terms of what the investigation should be to avoid infringement, and there was no testimony whatsoever that they ever had formed a good-faith belief," Martin said. "They have no evidence with regard to whether they reasonably believe the patents are valid or invalid."

But Judge Taranto pointed out that it's Provisur's obligation to show willfulness to justify the $10.5 million judgment, and that simply inferring that Weber didn't take every step necessary to ensure that they weren't infringing might not be enough.

"This is your burden ... to establish willfulness," Judge Taranto said. "You're urging that a failure to do all that stuff is a basis or an inference that they, under the willfulness standard, knew, or it should have been obvious that they were infringing."

U.S. Circuit Judges Kimberly A. Moore and Richard G. Taranto and U.S. District Judge Claire C. Cecchi sat on the panel for the Federal Circuit.

The patents-in-suit are U.S. Patent Nos. 7,065,936; 10,625,436; and 10,639,812.

Provisur is represented by Craig C. Martin, Sara T. Horton, Michael Babbitt, Ren-How Harn and Henry C. Thomas of Willkie Farr & Gallagher LLP.

Weber is represented by Daniel E. Yonan, Donald R. Banowit, William H. Milliken, Kristina Caggiano Kelly and Richard A. Crudo of Sterne Kessler Goldstein & Fox PLLC.

The case is Provisur Technologies Inc. v. Weber Inc., case number 23-1438, in the U.S. Court of Appeals for the Federal Circuit.