Filed on behalf of: Caterpillar Inc.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`ESCO CORPORATION,
`Patent Owner
`
`U.S. Patent No. 8,689,472
`
`DECLARATION OF LEE A. HORTON, P.E.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 103
`
`CATERPILLAR EXHIBIT 1002
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`ESCO CORPORATION,
`Patent Owner
`
`U.S. Patent No. 8,689,472
`
`DECLARATION OF LEE A. HORTON, P.E.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 103
`
`CATERPILLAR EXHIBIT 1002
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`QUALIFICATIONS ........................................................................................ 1
`
`I.
`
`II.
`
`III. MATERIALS REVIEWED ............................................................................ 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART .......................................... 4
`
`V.
`
`RELEVANT LEGAL STANDARDS ............................................................. 4
`
`VI. OVERVIEW OF THE ’472 PATENT ............................................................ 6
`
`VII. SCOPE AND CONTENT OF PRIOR ART ................................................... 8
`
`A.
`
`B.
`
`C.
`
`Emrich ................................................................................................... 9
`
`Jones and Kreitzberg ........................................................................... 20
`
`Pippins, Hall, Buckner, Pryba, and Churla ........................................ 21
`
`VIII. CLAIM CONSTRUCTION .......................................................................... 25
`
`IX. THE PRIOR ART RENDERS UNPATENTABLE CLAIMS 1-20 OF
`THE ’472 PATENT ....................................................................................... 29
`
`A.
`
`B.
`
`Claims 1-20 Are Unpatentable in View of Emrich Because
`Claims 1-20 Are Obvious And Because Claims 14-20 Are
`Anticipated .......................................................................................... 29
`
`Claims 1-20 Are Rendered Obvious in View of Emrich and
`Pippins ................................................................................................. 89
`
`X.
`
`CONCLUSION .............................................................................................. 97
`
`
`
`i
`
`Page 2 of 103
`
`
`
`I, Lee A. Horton, declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Caterpillar Inc. (“Caterpillar” or “Petitioner”) as
`
`an independent expert in this proceeding before the United States Patent and
`
`Trademark Office (“PTO”) involving U.S. Patent No. 8,689,472 (“the ’472 patent”)
`
`(Ex. 1001). I have prepared this declaration in support of Caterpillar’s Petition for
`
`Inter Partes Review.
`
`2.
`
`In my opinion, the claims of the ’472 patent are not patentable. The
`
`claims recite features of wear assemblies well known in the prior art. Claims 14-20 are
`
`anticipated by U.S. Patent No. 5,666,748 to Emrich et al. (“Emrich”) (Ex. 1003), and
`
`all of claims 1-20 would have been obvious in view of Emrich alone or Emrich in view
`
`of other prior art references, such as U.S. Patent No. 6,119,378 to Pippins (“Pippins”)
`
`(Ex. 1004). Therefore, I believe that claims 1-20 of the ’472 are either anticipated by
`
`or obvious in view of the prior art.
`
`II. QUALIFICATIONS
`3.
`I have been involved in new product-development engineering in the
`
`construction industry for over thirty years. My work has related to components for
`
`excavators, wheel loaders, backhoes, and crawler tractors, and I have been directly
`
`involved with the design, debugging, and testing of many construction-equipment
`
`products. Currently, I am the President of Leading Edge Attachments, Inc. (“Leading
`
`Edge”), a designer and supplier of high-quality attachments and quick-change
`
`1
`
`Page 3 of 103
`
`
`
`couplers for excavating equipment. Our products include buckets, rippers, and rakes
`
`that all use replaceable wear parts. As part of my work at Leading Edge, I design
`
`construction-equipment attachments that use adapters and teeth, including teeth that
`
`can be used on excavators, backhoes, or wheel loaders for rock and frost ripping. In
`
`addition to engineering and design, I communicate and receive feedback from dealers
`
`and end-users of our products.
`
`4.
`
`I graduated from Purdue University in 1980 with a Bachelor’s of Science
`
`degree in Mechanical Engineering. I focused my studies at Purdue on machine design,
`
`taking several Master-level courses in that discipline. I also received a Master of
`
`Business Administration degree from Illinois Institute of Technology in 1993.
`
`5.
`
`After graduating from Purdue University, I worked for five years at
`
`International Harvester and its successor, Dresser Industries, designing small and
`
`large rubber-tired loaders. During that time, I was involved with the specification of
`
`the buckets and teeth for the products. I later worked for six years at Komatsu
`
`Dresser Company and Komatsu America, where I was responsible for a group of
`
`twenty-three engineers that dealt with modifying the designs of the Japanese Komatsu
`
`excavators for use in the United States.
`
`6.
`
`In 1994, I became the Director of Engineering for Wain-Roy, Inc.
`
`(“Wain-Roy”), a manufacturer of backhoe and excavator couplers, buckets, and tools.
`
`In this position, I was responsible for the specification of ground-engaging tools on
`
`all of the products that Wain-Roy manufactured. I then became the Manager of
`
`2
`
`Page 4 of 103
`
`
`
`Engineering for Woods Equipment Company in charge of engineering for
`
`construction-equipment attachments, including attachments for excavators, backhoes,
`
`skid-steer loaders, and rubber-tired loaders. I was involved in new product design and
`
`maintenance engineering for all aspects of these attachments, including the teeth and
`
`adapters that were sourced for the product.
`
`7.
`
`I am a licensed professional engineer. I am named as an inventor on
`
`seventeen U.S. patents and one allowed patent application, most of which relate to
`
`construction equipment. I am also a named inventor on various pending U.S. patent
`
`applications, foreign patents, and foreign patent applications. From 1988 to 1991, I
`
`was the Vice President of the Society of Automotive Engineers Excavator subsection.
`
`I have won many awards for my work tool and wear-part designs, including
`
`Construction Equipment magazine’s “Top 100 Products of the Year” of 2012, Equipment
`
`World magazine’s “Top 50 Products of the Year” of 2012, and Equipment World
`
`magazine’s “Innovation Award” for 2006, and I was nominated for Construction
`
`Equipment magazine’s “Nova Award” for 2006.
`
`8. My curriculum vitae (attached as Appendix A) includes a more detailed
`
`summary of my background and experience.
`
`III. MATERIALS REVIEWED
`9.
`In forming my opinions, I have reviewed the ’472 patent, the
`
`prosecution history of the ’472 patent, and all of the documents discussed in this
`
`declaration. I have also relied upon my understanding of ground-engaging tools and
`
`3
`
`Page 5 of 103
`
`
`
`wear parts, developed through decades of experience with this technology prior to the
`
`alleged invention of the ’472 patent.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`10.
`In my opinion, a person of ordinary skill in the art of the ’472 patent
`
`would have a degree in mechanical engineering or equivalent, and three to five years
`
`of machine design or application experience. I have used such a level of skill in my
`
`analysis below. This level of skill is approximate and more experience would
`
`compensate for less formal education, and vice versa.
`
`11.
`
`I am above the level of ordinary skill in the art and was above the level
`
`of ordinary skill in the art at the time of the alleged invention. I had a degree in
`
`mechanical engineering and over twenty-four years of machine-design experience
`
`relating to construction equipment and ground-engaging tools at the time of the
`
`alleged invention.
`
`V. RELEVANT LEGAL STANDARDS
`12.
`It is my understanding that for a claim to be patentable over the prior art,
`
`the claim must be both novel and nonobvious. If a claim is not novel and nonobvious
`
`in view of the prior art, then the claim is not patentable.
`
`13. A claim is anticipated by the prior art, i.e., not novel, when a single prior
`
`art reference teaches every feature of the claim, either explicitly or inherently. For a
`
`prior art reference to teach a feature inherently, that feature must necessarily be
`
`present in the reference.
`
`4
`
`Page 6 of 103
`
`
`
`14.
`
`It is also my understanding that a claim is rendered obvious if the
`
`differences between the claimed invention and the prior art are such that the claimed
`
`invention as a whole would have been obvious to a person having ordinary skill in the
`
`art at the time of the invention. Analyzing obviousness requires the resolution of
`
`several factual inquiries. These inquiries include the scope and content of the prior art,
`
`the level of ordinary skill in the field of the invention, the differences between the
`
`claimed invention and the prior art, and any objective evidence of nonobviousness.
`
`15.
`
`I understand that objective evidence of nonobviousness directly
`
`attributable to the claimed invention, known as “secondary considerations” of
`
`nonobviousness, may include commercial success, satisfaction of a long-felt but
`
`unsolved need, failure of others, copying, skepticism or disbelief before the invention,
`
`and unexpected results. I am not aware of any such objective evidence of
`
`nonobviousness that is attributable to the ideas claimed in the ’472 patent.
`
`Furthermore, I have been advised that secondary considerations cannot outweigh a
`
`strong case of obviousness, as is the case here.
`
`16.
`
`In addition, I understand that the law requires a “common sense”
`
`approach when determining whether a claimed invention would have been obvious to
`
`a person having ordinary skill in the art. For example, combining familiar elements
`
`according to known methods is likely to be obvious when it does no more than yield
`
`predictable results. This is especially true in instances where there are limited numbers
`
`of possible solutions to technical problems or challenges.
`
`5
`
`Page 7 of 103
`
`
`
`17.
`
`I have been informed that when a patent claims a structure already
`
`known in the prior art that is altered by the mere substitution of one element for
`
`another known in the field, the combination must do more than yield a predictable
`
`result. And when there is a design need or market pressure to solve a problem and
`
`there are a finite number of identified, predictable solutions, a person of ordinary skill
`
`has good reason to pursue the known options within his or her technical grasp. If this
`
`leads to the anticipated success, it is likely the product not of innovation but of
`
`ordinary skill and common sense.
`
`VI. OVERVIEW OF THE ’472 PATENT
`18. The ’472 patent issued from U.S. Patent Application No. 13/705,691
`
`filed on December 5, 2012, which is a divisional application of U.S. Patent
`
`Application No. 13/369,699 (“the ’699 application”), which was filed on February 9,
`
`2012. The ’699 application is a divisional application of U.S. Patent Application No.
`
`13/005,791 (“the ’791 application”), which was filed on January 13, 2011. The ’791
`
`application is a divisional application of U.S. Patent Application No. 11/729,502
`
`(“the ’502 application”), and the ’502 application claims priority to U.S. Provisional
`
`Application No. 60/787,268, which was filed on March 30, 2006.
`
`19. The ’472 patent relates to wear assemblies for excavating equipment that
`
`“protect the equipment from wear.” Ex. 1001 at 1: 45-48. The disclosed wear
`
`assembly 10 (shown below) includes a wear member 12, which may be a tooth, a
`
`6
`
`Page 8 of 103
`
`
`
`shroud, or another kind of wear part. Id. at 4:30-52. Wear member 12 is releasably
`
`secured to a base 15 by a lock 17. Id.
`
`Base
`
`Wear Member
`
`Lock
`
`
`
`Perspective view of wear assembly (’472 Patent FIG. 1)
`
`20. Lock 17 pivots in hole 81 of wear member 12. Lock 17 can pivot
`
`between a “release” or unlocked position to allow wear member 12 to be installed
`
`onto base 15, id. at FIG. 23, and a “hold” or locked position to hold wear member 12
`
`onto base 15, id. at FIG. 25.
`
`Wear
`Member
`
`Adapter
`
`Lock
`
`Tool
`
`Lock moving from release to hold position (’472 Patent FIGS. 23 and 25)
`
`
`
`
`
`7
`
`Page 9 of 103
`
`
`
`21. Lock 17 is constructed of multiple parts, id. at 9:34-10:8, including a
`
`body 110, a latch formation 115, notches 122, 124, and 126, and a resilient member
`
`112. Id. at 9:60-10:11, 11:20-32, FIGS. 18, 22 (below).
`
`
`
`
`
`Perspective view and cross-sectional side view of lock (’472 Patent FIGS. 18 and 22)
`
`22. The ’472 patent discloses that the lock is “integrally secured to the wear
`
`member,” and that the lock and wear member can be “maintained as a single integral
`
`component through shipping, storage, [and] installation . . . without reliance on
`
`threaded members.” Id. at 2:56-3:5. According to the ’472 patent, the disclosed
`
`arrangement “reduce[s] the risk of dropping or losing the lock during installation,”
`
`“involves fewer independent components and an easier installation procedure,” and
`
`“enables improved part management and easier installation of the wear member with
`
`less risk of losing the lock.” Id. at 2:62-3:7.
`
`VII. SCOPE AND CONTENT OF PRIOR ART
`23. The concepts claimed in the ’472 patent, including a wear assembly with
`
`a base, a wear member, and a threadless lock secured to the wear member, were all
`
`8
`
`Page 10 of 103
`
`
`
`well-known at the time of filing of the provisional application from which the ’472
`
`patent claims priority.1 Emrich discloses all of these features. Other patents, including
`
`Pippins, U.S. Patent Application Publication No. 2005/0229442 to Jones et al. (“Jones”)
`
`(Ex. 1005), U.S. Patent No. 6,030,143 to Kreitzberg (“Kreitzberg”) (Ex. 1006), and U.S.
`
`Patent No. 5,596,908 to Hall (“Hall”) (Ex. 1007), confirm that persons of ordinary
`
`skill in the art at the time of the alleged invention already recognized the need to
`
`secure a lock to prevent it from falling out, and that prior publications disclosed
`
`various securing means that resolved this problem. These patents are consistent with
`
`my own experience at that time that it was desirable to secure locks such that they did
`
`not fall out of the wear parts with which they were combined.
`
`A. Emrich
`24. Emrich is directed to the same concepts claimed in the ’472 patent.
`
`Emrich explains that “[e]xcavating equipment in normal use is subjected to conditions
`
`which cause significant wearing of the components.” Ex. 1003 at 1:11-13. To lengthen
`
`the usable life of the equipment, Emrich discloses a replaceable “wear member[] . . . to
`
`protect surfaces subjected to wear.” Id. at 1:5-7. In particular, Emrich discloses a wear
`
`cap 10 that protects an upper surface of an adapter 28 that connects to an excavating
`
`tooth. Id. at 1:62-66, 3:48-50. Wear cap 10 includes “an outer or wear surface 14” and
`
`
`1 I have not done an analysis to determine whether U.S. Provisional Application No.
`60/787,268 provides support for the claims of the ’472 patent.
`
`9
`
`Page 11 of 103
`
`
`
`a concave “inner or mounting surface 16” that forms a cavity. Id. at 3:42-45, 3:66-4:2,
`
`FIG. 8. A user assembles wear cap 10 onto adapter 28 by positioning the wear cap’s
`
`tabs 36 and 38 in the adapter’s corresponding recesses 42 and 44 so that the wear
`
`cap’s concave surface 16 receives the adapter’s convex surface 37. Id. at 3:66-4:24.
`
`Wear Cap
`
`Tabs
`
`Recesses
`
`Concave Surface (Cavity)
`
`Convex Surface
`
`
`Wear assembly including a wear cap and an adapter (Emrich FIG. 2)
`
`Adapter
`
`Wear Cap
`
`Cavity
`
`
`
`Wear cap with a concave lower surface defining a cavity (Emrich FIG. 8)
`
`25. Wear cap 10 includes a lock 40 to secure wear cap 10 to adapter 28. Id. at
`
`4:62-63. After wear cap 10 has been placed on adapter 28, a user can rotate lock 40
`
`10
`
`Page 12 of 103
`
`
`
`between an unlocked (release) position in which rigid hub 64 protrudes into an
`
`opening 90 in wear cap 10 (see annotated FIG. 16 below depicting the lock in the
`
`“unlocked position”), and a locked (hold) position in which hub 64 protrudes into
`
`recess 44 of adapter 28, thereby securing wear cap 10 to adapter 28 (see annotated
`
`FIGS. 18 and 20 below depicting the lock in the “locked position”). Id. at 5:57-61.
`
`Opening in Wear Cap
`
`Hub of Lock
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Recess in Adapter
`Cross-sectional view of lock in “unlocked position” (Emrich FIG. 16)
`
`
`
`Opening in Wear Cap
`
`Hub of Lock
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Arrow
`showing
`rotation of
`lock
`
`
`
`
`
`Recess in Adapter
`Cross-sectional view of lock in “locked position” (Emrich FIG. 18)
`
`11
`
`Page 13 of 103
`
`
`
`Opening in Wear Cap
`
`Wear Cap
`
`Recess in Adapter
`
`
`Hub of Lock
`Side cross-sectional view of lock in locked position (Emrich FIG. 20)
`
`Adapter
`(colored gray)
`
`
`26. Lock 40 moves between its unlocked position and its locked position by
`
`rotating about its front shaft 74 and rear shaft 76. Id. at 5:4-15; see also id. at FIG. 20
`
`(annotated below). Rear shaft 76 is positioned and held in a longitudinal bore 94
`
`located in wear cap 10, id. at 5:32-33, and front shaft 74 is located in a groove 93 in
`
`wear cap 10, id. at 5:33-34; see also id. at FIG. 6 (annotated below).
`
`Opening in Wear Cap
`
`Rear Shaft
`
`Wear Cap
`
`Front Shaft
`
`Recess in Adapter
`
`
`Hub of Lock
`(locked position)
`Side cross-sectional view of lock in locked position (Emrich FIG. 20)
`
`Adapter
`(colored gray)
`
`
`
`
`12
`
`Page 14 of 103
`
`
`
`
`
`Hub of Lock
`(unlocked position)
`
`Opening in Wear Cap
`
`Wear Cap
`
`
`
`Adapter
`(colored gray)
`
`
`Side cross-sectional view annotated to depict lock in unlocked position (Emrich FIG. 20)2
`
`Wear Cap
`
`Bore
`(for Rear Shaft)
`
`Groove
`(for Front Shaft)
`Side cross-sectional view of wear cap (Emrich FIG. 6)
`
`
`
`27. A user can rotate lock 40 with a tool, such as a screwdriver. Id. at 5:61-64,
`
`6:27-29. Lock hub 64 includes depressions 73 on wall 70 and notches 105 on wall 72,
`
`id. at 5:61-64, 6:27-29, FIGS. 11, 12 (annotated below), that receive the tool for
`
`rotating the lock between its locked and unlocked position.
`
`2 Figure 20 has been revised to depict lock 40 in the unlocked position as would be
`understood by one of ordinary skill in the art based upon the disclosure and drawings
`including FIGS. 16 and 20.
`
`13
`
`Page 15 of 103
`
`
`
`Notch
`
`L-shaped
`Socket
`
`Rigid Hub
`
`L-shaped
`Socket
`
`Depression
`
`
`
`Front and side views of lock (Emrich FIGS. 11 and 12)
`
`28. To prevent lock 40 from unintended rotation, lock 40 also includes
`
`resilient latches 78 that secure lock 40 in both its locked position and its unlocked
`
`position. Id. at 5:18-27. Resilient latches 78 are secured within L-shaped sockets 80 in
`
`lock hub 64. Id. at 5:22-24, FIG. 11 (annotated above). Each resilient latch 78 includes
`
`an elastomer 82 and a rigid metallic tip 84. Id. at 5:22-24.
`
`29. When lock 40 is in the unlocked position, elastomers 82 cause tips 84 to
`
`“engage against the side walls 98 of opening 90,” thereby resisting rotation of lock 40.
`
`Id. at 5:52-53; see also id. at FIG. 16 (annotated below). Lock 40 is secured to wear cap
`
`10 in this position by shaft 76 being positioned in bore 94, bearing faces 66 and 68 of
`
`lock 40 abutting against respective front and rear surfaces of lock opening 90, and
`
`resilient latches 78 engaging against side walls 98. Id. at 5:43-59; see also id. at FIG. 20
`
`(annotated below to depict the position of the lock in the unlocked position). When
`
`lock 40 is in the locked position, elastomers 82 cause tips 84 to engage rails 96 (i.e.,
`
`14
`
`Page 16 of 103
`
`
`
`the lower walls of opening 90). Id. at 5:66-6:7; see also id. at FIG. 18 (annotated below).
`
`Emrich states that “[t]he engagement of latches [78] against rails 96 functions to
`
`releasably retain hub 64 in its locked position.” Id. at 6:23-24. When rotating between
`
`the locked and the unlocked position, latches 78 are “compressed into sockets 80 as
`
`they clear the walls 98 of opening 90.” Id. at 5:64-66.
`
`Upper Wall of Opening
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Tip
`Elastomer
`Tip
`Elastomer and tip securing lock in unlocked position (Emrich FIG. 16)
`
`
`
`
`
`Hub of Lock
`(unlocked position)
`
`Opening in Wear Cap
`
`Wear Cap
`
`
`
`Adapter
`(colored gray)
`
`
`Side cross-sectional view annotated to depict lock in unlocked position (Emrich FIG. 20)
`
`15
`
`Page 17 of 103
`
`
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Rail or Lower
`Wall of Opening
`
`
`
`Elastomer and tip securing lock in locked position (Emrich FIG. 18)
`
`30.
`
`I will now describe in sequence how Emrich’s lock and wear cap are
`
`assembled together. To assemble lock 40 to wear cap 10, shaft 76 of lock 40 is
`
`“inserted into bore 94” with the lock’s “linear peripheral wall 72 facing toward
`
`opening 90 [of wear cap 10], as in its locked position.” Id. at 5:43-45; see also id. at
`
`FIG. 20 (annotated below).
`
`Wear Cap
`
`Rear Shaft
`
`(2) Shaft is slid
`into the Bore
`
`(1) Lock is
`inserted into
`the Wear Cap
`
`Hub of Lock
`(locked position)
`
`Bore
`
`
`
`Side cross-sectional view of rear shaft inserted into bore (Emrich FIG. 20)
`
`16
`
`Page 18 of 103
`
`
`
`Hub of Lock
`(locked position)
`
`Wear Cap
`
`
`
`Front cross-sectional view of lock in locked position (Emrich FIG. 18)
`
`31. After insertion, lock 40 is in its locked position, shown in annotated FIG.
`
`18 above. Resilient latches 78 of lock 40 press on bearing surfaces 102 of wear cap 10
`
`in order to resist rotation of lock 40. Id. at 5:66-6:4.
`
`32. To prepare lock 40 and wear cap 10 for assembly with adapter 28, a tool
`
`is pressed into one of the notches 105 to “rotate hub 64 about shafts 74, 76, against
`
`the bias of the latches [78] as they successively abut one of the rails 96.” Id. at 6:29-33.
`
`Specifically, one of the resilient latches 78 is pushed inward to permit initial lock
`
`rotation, and then the other of the resilient latches 78 is pushed inward to permit the
`
`lock to move into the unlocked position. Id. at 6:29-33. Lock 40 is rotated 180 degrees
`
`about rear shaft 76 “to place hub 64 in opening 90 before the wear cap is placed on
`
`wearable surface 29.” Id. at 5:45-47, 6:29-33. In this position, lock 40 is in the
`
`unlocked position, shown in FIG. 16 below. Id. at 5:47-50. Also, in this position,
`
`resilient latches 78 resist rotation of lock 40 by pressing on walls 98. Id. at 5:52-53.
`
`17
`
`Page 19 of 103
`
`
`
`Wear Cap
`
`Hub of Lock
`(unlocked position)
`
`
`
`Front cross-sectional view of lock in unlocked position (Emrich FIG. 20)
`
`33. To attach wear cap 10 to adapter 28, a user places wear cap 10 on
`
`adapter 28, as shown in FIG. 16 below. Lock 40 is then rotated using a tool such that
`
`a portion of lock 40 protrudes into recess 44, as shown in FIGS. 18 and 20 below. Id.
`
`at 5:57-6:1.
`
`
`
`Opening in Wear Cap
`
`Hub of Lock
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Recess in Adapter
`
`
`
`
`
`Cross-sectional view of lock in “unlocked position” (Emrich FIG. 16)
`
`18
`
`Page 20 of 103
`
`
`
`Opening in Wear Cap
`
`Hub of Lock
`
`Wear Cap
`
`Adapter
`(colored gray)
`
`Recess in Adapter
`Cross-sectional view of lock in “locked position” (Emrich FIG. 18)
`
`
`
`34. Bearing face 66 of lock 40 now opposes bearing wall 103 of adapter 28
`
`and bearing face 68 of lock 40 now opposes bearing face 92 of wear cap 10, thus
`
`preventing wear cap 10 from disengaging from adapter 28. Id. at 6:15-22. Wear cap 10
`
`and lock 40 are both secured to adapter 28. Id. Rotation of lock 40 is resisted by tips
`
`84 of resilient latches 78 abutting bearing surfaces 102. Id. at 5:66-6:4, 6:23-24.
`
`Opening in Wear Cap
`
`Wear Cap
`
`Bearing Wall
`
`Hub of Lock
`
`Adapter
`(colored gray)
`
`
`
`Side cross-sectional view of lock in locked position (Emrich FIG. 20)
`
`19
`
`Page 21 of 103
`
`
`
`35. To remove the assembled wear cap 10 and lock 40 from adapter 28, the
`
`process is reversed. The user presses a tool into one of the two notches 105 to “rotate
`
`hub 64 about shafts 74, 76, against the bias of the latches [78] as they successively
`
`abut one of the rails 96.” Id. at 6:29-33. Specifically, one of the resilient latches 78 is
`
`pushed inward to permit initial lock rotation, and then the other of the resilient
`
`latches 78 is pushed inward to permit lock 40 to move into the unlocked position. Id.
`
`Lock 40 is rotated until the entire lock is out of recess 44 of adapter 28, as shown
`
`above in FIG. 16 of Emrich. Id. at 6:38-39. From this position, the assembled wear cap
`
`10 and lock 40 can be removed from adapter 28 by a forward and upward movement.
`
`Id. at 6:39-41.
`
`36. Emrich discloses concepts familiar to those of ordinary skill in the art at
`
`the time of the alleged invention. It discloses a wear assembly that has a wear member,
`
`a base in the form of an adapter, a threadless lock secured to the wear member,
`
`resilient members, tool-receiving formations, latch formations, and other well-known
`
`features.
`
`B. Jones and Kreitzberg
`Persons of ordinary skill in the art also understood that construction
`
`37.
`
`tools are subject to high forces and vibrations, which can cause a lock to jostle, wear,
`
`and loosen. See, e.g., Ex. 1005 ¶¶ [0004], [0006], [0010]. If a lock wears or loosens
`
`sufficiently, it can fail and “expose[] the adapter to premature wear and possible
`
`20
`
`Page 22 of 103
`
`
`
`damage to the equipment.” Ex. 1006 at 1:64-67. I was familiar with these issues at the
`
`time of the alleged invention due to my own work with construction machinery.
`
`38. To minimize wear on parts subject to vibrations, the parts must fit
`
`tightly together. This was another fact well known to those of ordinary skill in the art
`
`at the time of the alleged invention. See Ex. 1005 ¶¶ [0009]-[0011]. One known way to
`
`protect a lock from vibration was to use a “resilient member” that both dampens the
`
`vibration and expands to hold the lock snug over time. Jones, for example, discloses a
`
`resilient member that “resists loosening” and “applies an expanding force that
`
`continues to tighten the fit of [the] wear member on the protected structure even after
`
`wear begins to develop in the components.” Id. ¶ [0010]. Kreitzberg also discloses an
`
`“elastomeric element” that “expand[s] to maintain a tight fit in . . . aligned assembly
`
`apertures and prevent loss of [a] pin.” Ex. 1006 at 2:4-13. Thus, it was well known at
`
`the time of the alleged invention to use elastomeric members to secure locks of wear
`
`parts such that the locks do not loosen due to vibration and wear.
`
`C. Pippins, Hall, Buckner, Pryba, and Churla
`In addition to using elastomeric members, persons of ordinary skill in
`
`39.
`
`the art at the time of the alleged invention used a variety of other well-known means
`
`to secure locks of wear parts, including threads, snap fits, and friction fits. Pippins,
`
`which relates to wear parts for excavation equipment, teaches securing the shaft of a
`
`pin or lock within a bore using both threaded and threadless fasteners to hold a tooth
`
`onto an adapter. Regarding the latter, Pippins discloses “[a] system for rapid and easy
`
`21
`
`Page 23 of 103
`
`
`
`replacement of sacrificial machine parts, utilizing an adapter having a slot and a
`
`retainer pin fitted with at least one spring-loaded ball bearing suitable for engaging the
`
`slot when the retainer pin is inserted into the adapter.” Ex. 1004 at Abstract.
`
`40.
`
`In a first threadless embodiment, Pippins discloses a pin (or lock) 202
`
`that includes at least one spring-loaded ball bearing 203 and a spring mechanism 204,
`
`and an insert 200 having a bore and slot 201 configured to receive pin 202. Id. at
`
`6:9-17, FIG. 8 (annotated below). When pin 202 is pushed into the bore of insert 200,
`
`the spring mechanism 204 forces the ball bearing 203 radially outward to engage with
`
`slot 201. Id.
`
`Slot
`
`Insert
`
`Ball Bearing
`
`Pin (lock)
`
`Spring
`
`
`
`Side cross-sectional view of pin and insert (Pippins FIG. 8)
`
`41.
`
`In another threadless embodiment described by Pippins, a pin 212 is
`
`releasably secured in a bore of insert 210. Id. at 6:44-47, FIG. 9 (annotated below). Pin
`
`212 includes one or more springs 213, and the bore of insert 210 includes slots 211. Id.
`
`22
`
`Page 24 of 103
`
`
`
`When pin 202 is pushed into the bore of insert 210, springs 213 engage with slots 211
`
`to prevent axial movement of pin 202 with respect to insert 210. Id.
`
`Slots
`
`Insert
`
`Pin
`
`Spring
`Side cross-sectional view of pin and insert (Pippins FIG. 9)
`
`
`
`42.
`
`Preventing the loss of locking parts was known not only in the wear-part
`
`industry, but also was a common-sense objective across many industries at the time of
`
`the alleged invention. People of ordinary skill in the art have known for a long time
`
`that lock assemblies need some way to secure the component parts, such as the lock,
`
`to prevent these parts from being lost when they are handled or shipped. In my
`
`experience, securing parts for shipping and handling is a routine consideration, and it
`
`has been this way since long before the ’472 patent’s alleged date of invention. One
`
`patent that illustrates this is Hall, which relates to a lockable cable assembly for a
`
`bulkhead. Hall recognizes that some prior art lock assemblies were “susceptible to
`
`inadvertent detachment and loss during shipping.” Ex. 1007 at 1:29-32. Hall therefore
`
`discloses “a lock . . . for movement between an unlocked position to allow movement
`
`23
`
`Page 25 of 103
`
`
`
`of the gripping means to the deflected position, and a locked position to prevent the
`
`gripping means from moving out of gripping engagement with the bulkhead.” Id. at
`
`1:49-54. Hall includes a “first detent means [that] is included for releasably holding the
`
`lock in the unlocked position as well as a second detent means for releasably holding
`
`the lock 40 in the locked position.” Id. at 3:29-32. To ensure that the lock is not lost,
`
`“[d]uring shipping, the detent tab 54 is disposed in the detent openings 56 of the legs
`
`46.” Id. at 3:49-50.
`
`43. The prior art also recognized additional reasons for securing parts. See
`
`U.S. Patent Application Publication No. 2005/0173203 to Buckner (“Buckner”) (Ex.
`
`1008 ¶ [0005] (making two parts integral, because when separate, they can “become
`
`lost or dislodged during shipping, installation and/or use and add to the cost and
`
`complexity of manufacturing and installing [the parts]”); U.S. Patent No. 6,230,676 to
`
`Pryba et al. (“Pryba”) (Ex. 1009) at 1:58-63 (stating that the prior art designs are “more
`
`susceptible to having loose, individual component parts lost during shipping and
`
`handling,” and result in “inventory burden”); U.S. Patent No. 4,210,374 to Churla
`
`(“Churla”) (Ex. 1010) at 1:21-26 (stating that the prior art components suffer from
`
`various drawbacks, the most serious of which being that during storage and shipment,
`
`the parts may come loose and be lost). Thus, the considerations and objectives
`
`described in the ’472 patent for designing the claimed wear assembly were known and
`
`obvious at the time of the alleged invention. The components as recited in the claims
`
`were known and obvious too.
`
`24
`
`Page 26 of 103
`
`
`
`VIII. CLAIM CONSTRUCTION
`44.
`I have been advised that in inter partes review proceedings before the
`
`PTO, a patent claim receives the broadest reasonable construction in light of the
`
`specification of the patent in which it appears. I have also been advised that claim
`
`terms are given their ordinary and accustomed meaning as they would be understood
`
`by one of ordinary skill in the art.
`
`45.
`
`I discuss several claim terms below and what I understand to be
`
`Caterpillar’s construction of these terms.
`
`“cavity”
`Independent claims 1 and 14 recite a “cavity for receiving a base on the
`
`46.
`
`excavating equipment.” Ex. 1001 at 12:33-34, 13:21-22. I understand Caterpillar
`
`proposes that, to the extent the Patent Trial and Appeal Board (the “Board”) finds it
`
`necessary to construe the term beyond its plain meaning, this term should be
`
`construed to mean “a hollow space.” I agree that this would be a reasonable
`
`construction to one of ordinary skill in the art in light of the specification. The
`
`specification discloses a hollow space, defined by a socket 16 that receives a base. Id.
`
`at FIG. 3. The ’472 patent also discloses “a pocket or cavity 83 defined in one side of
`
`nose 14” that is configured to receive lock 17. Id. at 9:34-36. Cavity 83, like socket 16,
`
`consists of a hollow space as shown in FIG. 4. Therefore, construing “cavity” to
`
`mean “a hollow space” is consistent with the spec
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
