Attorney Docket No. 051291.00218
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Reexam
`Control No. 95000437
`Filed: February 3, 2009
`US. Patent No. 7,174,661 to Briscoe
`Title: Releasable Coupling Assembly
`
`)
`)
`)
`)
`)
`
`Mail Stop: Inter Partes Reexam
`Attn: Central Reexamination Unit
`Examiner: Jimmy G. Foster
`Art Unit: 3993
`
`DECLARATION OF INVENTOR TERRY L. BRISCOE
`
`I, Terry L. Briscoe, make this declaration based on my personal knowledge:
`
`I am the named inventor of US. Patent No. 7,174,661 issued according to the face
`1.
`of the patent on February 13, 2007 and titled “Releasable Coupling Assembly.”
`
`I am sixty years of age at this time, and a resident of Portland, Oregon. I am of
`2.
`sound mind and body.
`
`I earned a Mechanical Engineering Degree from the University of Portland in
`3.
`1970, with honors.
`I earned a Professional Engineer’s License in the State of Oregon
`through successful testing in 1974, and through continued engineering training, I have
`held that license ever since.
`
`I am currently employed by ESCO Corporation of Portland, Oregon, and am a
`4.
`Senior Engineer in Technology Development. We develop the technology that is to be
`used by product engineers to implement into new products. No part of my compensation
`depends. on the success or failure of ESCO in the subject reexamination of the patent I
`identified above. I do own ESCO Corporation stock. I do receive bonuses that depend on
`company profits.
`
`I
`I started employment with ESCO Corporation in 1970 as a Design Engineer.
`5.
`then became a Project Engineer, Manager of Capital Products Engineering, Manager of
`Sales Engineering, Marketing Manager
`for Capital Products,
`a New Products
`Development Engineer, and then. gained my current title and position. I currently work in
`engineering part—time, with groups, to provide new ideas and concepts, mentor newer
`engineers, and add innovative aspects for all product solutions.
`
`Most of my engineering activities throughout my career since 1970 have involved
`6.
`mining equipment. This equipment
`includes such things as dragline buckets, cable
`shovels — also known as shovel clippers, hydraulic shovels, hoe clippers - also knowu as
`excavators, cutter heads, and the shrouds, wear shoes,
`trunnions, rigging, and all
`associated equipment, including wear parts for this equipment.
`It generally has'not
`included teeth; however, I have been involved in the design of teeth when on special
`projects.
`I have been involved with most if not all ESCO products except contract
`castings. For a time, concurrently with my design work in mining products,
`I was
`involved with the contacts between ESCO engineering and ESCO mining customers in
`
`The Patent Owuer’s Response to the First Office Action Dated May 6, 2009
`Declaration of Inventor Ten-y L. Briscoe, Page 1 of 7
`
`Exhibit E
`
`Caterpillar v. ESCO IPR2015-oo409
`__ Esco Exhibit 2019 Page 1
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 1
`
`

`

`Attorney Docket No. 051291.00218
`
`I have travelled to mine sites all over the
`efforts. to meet their needs and solve problems.
`world where l have observed not. only the operation of various excavating machines but
`also many different competitive wear assemblies.
`
`ESCO is a business started in or about 1913. Current products brochures of ESCO
`7.
`are attached as Briscoe Declaration Exhibit 1 w “ESCO Engineering Products, Primary
`Markets,” E/GEN~201~0304, Exhibit
`2
`— ESCO —
`“Engineered
`Products,”
`P1000GEN01L0109,
`Exhibit
`3
`—
`“ESCO, Mining,
`Engineered
`Products,”
`P2000M1N01L0107,
`and Exhibit
`4 — “ESCO Universal Wear
`Solutions,”
`P3002MlN010707. As indicated in these brochures ESCO considers itself and I consider
`
`it the innovation leader for metal wear parts, components and earthmoving products used
`in global mining, construction, dredging and other challenging industrial applications. As
`also indicated, ESCO wear assemblies are manufactured by 13800 and qualified licensees
`on many continents and in many countries of the world.
`
`As indicated in Ex. 1, ESCO offers and has offered through the 2000’s leading
`8.
`tooth system technology. Tooth systems are an integal factor in improving excavating
`equipment performance.
`
`As seen primarily in Exhibit 3, at page 48 for example ESCO’S tooth systems
`9.
`mount to the lips of various buckets, including very large shovel clippers. Shovel clippers
`can be as large as 60 yards (i.e., having a capacity of 60 cubic yards of material) or more.
`Machines of the size of 60 yards generate “bail pulls” (£26., the pull on bails to pull the
`bucket through the ground in a digging operation) on the order of five hundred thousand
`pounds. Larger machines can apply even greater pull forces. These pull forces generate
`loads of this same magnitude on the teeth and even more due to impact loading.
`
`1, on the page “Attachments and Wearparts for the
`As indicated in Ex.
`10.
`Construction Market,” and the next page thereafier; also in Ex. 2, on the page with the
`headings “Mining” and “Construction,” and the next pages thereafter; also in Ex. 3, on
`the page “8V2 Mining Tooth System,” and the next pages thereafter; and also in Ex. 4,
`terms such as “wear components,” “wear assembly,” “wear member,” “wear part,” and
`the like, have specific meanings in the industries that E'SCO serves. “Wear parts” are the
`parts of excavating equipment that serve several important fianctions. First, they are in
`direct contact with the materials. being excavated, and absorb the large dynamic loads
`caused by contact with the excavated materials as. the bucket is moved through the
`ground in a digging operation. Such large and dynamic loading can result in breakage,
`defamation or loss of the wear parts. Second, the wear parts suffer loss of material from
`their surfaces caused by contact with the abrasive earthen materials being excavated,
`which can result in fiictional wearing and deformation. Third, wear parts experience
`internal loading and internal loss of material and deformation as a result of contact with
`mating components. whether it be another wear component or a support structure. Such
`internal loading and movement can cause peening, galling fracturing and other damage-
`within the wear parts. The terms “wear assembly” and “wear member” are best
`understood by reference to the patent in reexamination as it would. be understood by a
`person of ordinary skill in excavating equipment.
`
`The Patent Owner‘s Response to the First Office Action Dated May 6, 2009
`Declaration of Inventor Terry L. Briscoe, Page 2 of 7
`
`Exhibit E
`
`Caterpillar v. ESCO IPR2015-oo409
`_ ESCO Exhibit 2019 Page 2 _
`
`_
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 2
`
`

`

`Attorney Docket No. 05129100218
`
`As indicated in Ex. 1, on the page “ESCO Engineered Products Group (EPG)”
`11.
`ESCO has and had in the 2000’s research and development facilities and personnel for
`innovating new products. As shown in Ex. 2, at page 6, ESCO has and had in the 2000’s
`computer aided design facilities and personnel, rapid prototyping facilities and personnel,
`and comprehensive testing facilities and personnel. Computer aided design models are
`also used in predictive analysis methods to understand strength, deformation, dynamics
`and flow. ESCO also has facilities to test for anticipated load conditions, relative motion
`of mating parts, fine impaction, the effects of extreme temperatures, and penetration of
`components during digging.
`
`ESCO has a wide variety of standard and custom laboratory testing capabilities.
`12.
`As an example, ESCO has an impressive drop tower which ESCO engineers employ to
`drop heavy weights from heights to apply impact loads to excavating equipment parts to
`test part strength and locking systems.
`Using strain gauges and computerized
`calculations from the test results we are able to measure the resistance to breaking of the
`part, and robustness of the system. We have the capability to digitally record laboratory
`events and analyze the discrete dynamic interaction between parts. We also utilize a high
`speed camera to capture unique events within a single drop to further understand how
`locks may interact with their parent parts during a severe impact.
`
`ES’CO also simulates the endurance life of systems by subjecting wear parts and
`13.
`assemblies to- repetitive loading over an extended period of time, i.e., it does cyclic'or
`fatigue testing on many parts to determine their fatigue life and to confirm results from
`non destructive testing such as finite element analysis. (PEA). ESCO does specific unique
`testing to measure penetration, abrasion resistance, and material flow. For example we
`have a test facility for excavating equipment mining teeth that repetitively drives such
`teeth into compacted engineered soil under engineering control, observation, inspection
`and recording, to determine such matters as how much work the tooth must do to enter
`the material, and the extent to which it disperses the material or enters without disruption.
`Previously, ESCO has also driven teeth over time through specific material, and
`measured the resistance, and determined the wear and optimum design of a tooth shape
`for example.
`
`As another example, ESCO replicates field situations in which looks and other
`14.
`parts experience compacted fines. A specific mixture of sand, cement and other fines is
`forced into all orifices of the part, allowed to dry and then baked or frozen for a period of
`time. This is to try to duplicate a part exposed to extended desert heat or extended
`extreme cold. After the fines have been cured to the appropriate condition we then
`attempt to remove the locking device or disassemble the system to simulate conditions
`that our customers would see in the field.
`
`15.
`I am a named inventor or co-inventor in 27 United States Patents. 1 am the lead
`inventor of ESCO Corporation in terms of number of patents in which I am a named
`inventor. l was at times listed as Terry Briscoe and Terry L. Briscoe. ESCO values its
`
`The Patent Owner's Response to the First Office Action Dated May 6, 2009
`Declaration of Inventor Terry L. Briscoe, Page 3 of 7
`
`Exhibit E
`
`Caterpillar v. ESCO IPR2015-oo409
`_
`_ esco Exhibit 2_o_19 Page 3
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 3
`
`

`

`Attorney Docket No. 051291.00218
`
`patents, and the innovations they represent, such that images taken from substantially all
`ESCO patents hang on the walls of the offices of ESCO. A listing of my patents follows:
`
`7,299,570
`
`7,174,661
`
`7,171,771.
`
`7,100,315
`
`6,986,216
`6,735,890
`
`6,705,031
`6,550,163
`
`6,446,366
`6,431,216
`5,970,636
`5,382,] 10
`
`5,084,990
`
`5,063,695
`
`5,056,243
`
`5,005,304
`
`4,995,176
`4,903,420
`
`RE32,847
`
`4,791,738
`
`4,718,788
`4,689,904
`4,640,496
`4,597,713
`
`4,561,154
`4,400,933
`4,337,614
`
`Wear Assembly for an Excavator
`Releasable Coupling Assembly
`Releasable Coupling Assembly
`Point and Adapter Assembly
`Wear Assembly for the Digging Edge of an Excavator
`Wear Assembly
`Dragline Apparatus and Bucket
`Dragline Apparatus and Bucket
`Dragline Apparatus and Bucket
`Protective Tube Assembly
`Dump Block
`Quick Coupling Device
`Dragline Bucket and Method of Operating the Same
`Replaceable Wear Element and Method-
`Connection for Elements at least one of which is subject to Abrasive Wear
`Replaceable Wear Element
`Replaceable Wear Element, Assembly and Method
`Mining Tooth Point
`Wedge—type Rope Socket Connection and Method
`Dragiine Bucket
`Wire Rope Equalizer Socket
`Rub Link Assembly for Dragline Bucket
`Dump Block for Dragline Bucket
`Shovel Dipper Bail Assembly
`Wedge-type Rope Socket Connection and Method
`Connecting Link
`Pin Locking Assembly
`
`16.
`
`I call the invention of US. Patent 7,174,661 the “Torque Wedge”TM pin.
`
`In my opinion, after review of the patents cited in this reexamination, the claims
`17.
`of U.S. Patent 7,174,661 are novel and would not have been obvious at the time of
`invention to a person of ordinary skill in the art assuming that person knew of the cited
`patents. In contrast, the invention. of the claims required invention to come into existence.
`I recognize that those who observe from outside the field of excavating equipment might
`perceive the invention as simple in hindsight, but the appearance is deceptive.
`
`To me, the person of ordinary skill at the time of invention would have been
`18.
`among the people with whom I had contact at the time of invention. These people are
`experienced with most applications of construction and mining equipment and the
`problems associated with using the equipment. Over 30 years ago my then supervisor told
`the lead engineers to eliminate threaded. fasteners. from use as the bolts and nuts that were
`in common use at the time did not work well in earthmoving and were expensive because
`
`The Patent Owner’s Response to the First Office Action Dated May 6, 2009
`Declaration of inventor Terry L. Briscoe, Page 4 of 7
`
`Exhibit E
`
`Caterpillar v. ESCO IPR2015—00409
`__
`_ ESCQ Exhibit 2010 Page 4
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 4
`
`

`

`Attorney Docket No. 051291.00218
`
`they could never be reused. This instruction was the incentive for my first patent
`4,337,614 Pin Locking Assembly. Based on the experience of having to burn off bolts
`from nuts to remove them in the field, and the historical knowledge that threaded
`fasteners have had problems in the presence of impacted fines, others were skeptical that
`the new concept of the patent would work. They responded to my conception of the
`invention with skeptical statements such as “I don’t think that’s going to work.” One co—
`worker, and senior engineer to me at the time, said to me, “It won’t work; threads don’t
`work with impacted fines." That tells me that it was not an obvious invention at the time.
`
`Looking devices at ESCO have always provided some of the most challenging
`19.
`problems. Their primary purpose is to hold one part onto another part in the appropriate
`place. They must do this not only when the parts are in original condition but when the
`wear parts have worn. and changed shapes. We need to have a good mechanical lock in
`order to make use of the full design strength of parts and not suffer breakage even under
`high loading, but yet still be able to install and remove the lock with relative ease by
`workers using hand-held tools in the field.
`
`20. In the past, welds have often been used by customers as a secure locking method.
`Welds, however, are not considered optimum because of the difficulties in removing the
`component and the damage and destruction that can occur during such removal. On
`extremely hard parts welds often cause cracking and breakage or loss. Most of our harder
`parts are not considered weldable, and parts that are to be welded are made of a sofier
`material that will not withstand the rigors of digging as well. Nevertheless, even with
`such problems, welds have been commonly used to attach wear members to excavating
`equipment; for example, adapters are commonly welded to bucket lips. The fact that
`welding has continued in common usage is an indication that removable, mechanical
`locks have not worked well.
`
`21. For all the reasons given above in paragraph 20, ESCO requires a mechanical locking
`device for many of its wear members. ESCO has always been and is always looking for
`new ways to lock parts together. ESCO has been working with and improving mechanical
`locks that are intuitive and easy to use for about forty years. For safety reasons,
`hammerless locks, those not requiring a hammer to install or remove, have been a desire
`at ESCO for the past many years. Concerns with hammers appear in the specification of
`my patent being reexamined, and those statements of my patent have been reviewed, and
`are accurate. Representative photographs also illustrate some of the concerns with the use
`of hammers. A photograph is given below this text. It shows a worker swinging a sledge
`hammer from between his legs to- strike a hard blow on a lock holding a wear member on
`a bucket from the underside. The swing is awkward, as seen. Many such awkward swings
`and strikes with a 16-30 pound hammer are required to change the several teeth of a
`bucket where such hammering is required, as many as 45 to 120 blows, and sometimes as
`many as 120- for a single tooth. Many times, as well, another worker is required to be
`under the bucket to provide another tool for the hammer to strike. Despite the safety
`concern, however, hammers are difficult to take out of use for installing or removing
`locks as hammers are considered by mine workers as such useful tools. They can provide
`
`The Patent Owner’s Response to the First Office Action Dated May 6, 2009
`Declaration of Inventor Terry L. Briscoe, Page 5 of 7
`
`Exhibit E
`
`Caterpillar v. Esco IPR2015-oo409
`ESCO Exhibit 201;) Page 5_
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 5
`
`

`

`
`
`Attorney Docket No. 051291 .002l8
`
`more man-applied force than any other
`tool and the advantage of applying an
`impact force with a hammer to remove
`a lock when packed with fines is hard to
`duplicate.
`
`Part of my job at all times has
`22.
`been to generate new concepts.
`1 work
`from knowing what cor customers have
`in their mines and what they have on
`their service trucks that will hold or
`
`-
`remove
`something Customers,
`for
`example want excavation equipment teeth that provide extended full service such that
`production stays as high as possible. Good mechanical locking devices are necessary to
`hold wear pads and their support structures securely together, and to allow wear parts to
`stay on and functioning for the life of the part, in spite of external and internal wear. This
`function allows for filll use of the wear metal or wear life of the part. To allow parts to
`wear longer, parts normally must be as hard as possible. This means they will also stay
`sharper Ionger for better production of the piece of mining equipment. However, as wear
`parts and particularly teeth wear they become less sharp and penetration into the material
`becomes more difficult and as a result the production capability of the machine decreases.
`When this happens the teeth shouid be changed. However, in many cases if the locks are
`difficult to change the operators or tooth changers do not change them as often as they
`should because it is hard work. The ultimate goal of a good tooth system is to stay sharp
`and productive as long as possible but when it needs changing to be as easy and efficient
`as possible to remove and install new parts. Lowest tooth cost is not the objective; lowest
`cost per yard to remove material is! Therefore, locks must be fast, mechanical, and as
`easy to change as possible while still firmly holding the part in the correct orientation for
`optimum production. Customers also want predictable lengths of time to change teeth, as
`they accomplish changes in scheduled downtimes based on such predictions.
`If their
`dOWntime is scheduled for an hour they do not want a surprise that one of the locks takes
`2 hours to burn out. Extended downtime of a digging machine not only reduces
`production for the machine but may cause other equipment and personnel to sit idle such
`as hauling trucks, crushers, etc. The loss of production and accompanying costs can be
`substantial.
`
`As to what customers have on their trucks, they have, for example, welding
`23.
`equipment, air pressure equipment, hydraulic equipment, powered hand tools, cranes, and
`manual hand tools such as sledge hammers, wrenches, chipping hammers and pry bars.
`The adapter shown for example in Figure 17 can typically weigh 700 pounds, be 4 feet
`long, 2 feet
`top to bottom, and 1 foot across. The representative weights and sizes
`involved can be seen in the photograph above, where the mine worker swinging a sledge
`hammer is dwarfed by a representative bucket which has teeth and adapters that are
`together more than half the size of the man. Placing an adapter of the typical weight and
`dimensions described on an excavating equipment support structure typically involves
`lifting the adapter through use of a crane, as it is too heavy for manual lifting. Tightening
`
`The Patent Owner‘s Response to the First Ofi'ice Action Dated May 6, 2009
`Dectaration of Inventor Terry L. Briscoe, Page 6 of?
`
`Exhibit E
`
`Caterpillar v. ESCO |PR2015-00409
`ESCO Exhibit 2019 Page a
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 6
`
`

`

`Attorney Docket No. 051291 .00218
`
`such an adapter on. a support structure involves applying enough force to move the weight
`of the adapter so that a tight fit is made between the adapter and the support structure, in
`the presence of the friction and resistance to movement caused by its weight and mass,
`and.
`in many cases abrasive soil materials.
`It
`is also advantageous to apply some
`magnitude of preload to keep the adapter tight under the severe loading that it will
`experience in normal operation. Freeing such an adapter from a lock for removal involves
`applying enough force to move the adapter weight and mass against such resistances and
`do so- in the presence as well of the cementing effects of fines. 1 considered" and tried
`many different designs and different
`ideas while working tbvvard conceiving the
`invention, including but not limited to using prying, using hydraulics, using a push-
`through- lock from the side, and even using the excavating equipment’s own application
`of force through excavating contacts and motions to cause the looking.
`I ultimately
`rejected these many ideas as not providing the force and sensitivity to the various
`environments encountered in the field.
`
`24.
`The claimed invention has become one of the tools of choice for locks because of
`its ability to be intuitive, be hammerless and to generate a great amount of force for a
`small area. The Torque WedgeTM Pin is now being typically installed and removed with
`a handheld pneumatic impact wrench. The operator can and does. stand above the
`assembly, kneel over it, sit next to it or even stand in front of the lip, to tighten the lock
`with the impact wrench, while being in a convenient, ergonomic position, and without
`swinging a heavy sledge hammer. Tightening the lock typically takes about 30 seconds.
`Removal also generally takes only a few minutes.
`
`' The claimed invention is being used as a locking device in many applications,
`25.
`such as mechanical adapters, shrouds, teeth/points, and dragline rigging. It has, for
`example, been used in Whisler PlusTM mechanical adapters with 60 cubic yard shovel
`dipper buckets. A bucket of approximately sixty yards appears for example, on the cover,
`in the center, of Ex. 2. As with the photograph above, with the image on the cover of the
`exhibit, a human is small
`in comparison to the bucket. ”The Whisler PlusTM adapter
`system with the Torque WedgeTM Pin is at Ex. 3 on page 9. A comparison. of the adapter
`system and pin to a previous hammered unit is also pictured there. While this image
`shows hammer blows from above the unit, not from below as in the photograph above,
`the number of hammer blows and their concerns were essentially the same as with blows
`from the bottom. The blows from above are for installation of the adapter; the ones from
`below are for removal.
`
`E800 is not only putting the invented units. on buckets it is selling, it has been
`26.
`converting customer buckets of our own and competitors’ designs to Whisler PlusTM
`adapter systems using the Torque WedgeTM Pin at customer costs of tens of thousands of
`dollars. ESCO is able to do that because of the benefits of both the Whisler Plus TM
`
`adapter system and the Torque WedgeTM Pin.
`
`Executed on: May 6, 2009
`
`I declare underpenaltyofperjury that the foregoing is true and correct. of
`
`
`Terry -
`
`. Brisco-e
`
`- The Patent Owner’s Response to the First Office Action Dated May 6, 2009
`Declaration of Inventor Terry L. Briscoe, Page 7 of 7
`
`Exhibit E
`
`Caterpillar v. ESCO IPR2015-oo409
`_ Esco Exhibit 2019 Page 7
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2019 Page 7
`
`