UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`CATERPILLAR INC.
`Petitioner
`
`v.
`
`ESCO CORPORATION
`Patent Owner
`__________________
`
`Case: IPR2015-01032
`Patent: 8,689,472
`__________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`CATERPILLAR INC.
`Petitioner
`
`v.
`
`ESCO CORPORATION
`Patent Owner
`__________________
`
`Case: IPR2015-01032
`Patent: 8,689,472
`__________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case: IPR2015-01032
`Patent: 8,689,472
`
`I.
`
`II.
`
`PRELIMINARY STATEMENT ..................................................................... 1
`
`THE BOARD CORRECTLY DETERMINED THAT CLAIMS 15-17
`ARE UNPATENTABLE IN THE INSTITUTION DECISION ..................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`ESCO provides no expert testimony to support its attorney
`arguments .............................................................................................. 1
`
`The Board correctly determined that Caterpillar provided
`sufficient evidence showing that Gale discloses a lock capable
`of being secured in a release position ................................................... 2
`
`The Board properly construed the “during installation”
`limitation of claim 15 in the Institution Decision ................................. 6
`
`Caterpillar, along with Caterpillar’s expert, clearly explained
`how Gale’s lock is “releasably securable” to the wear member ........... 8
`
`III. CONCLUSION ..............................................................................................10
`
`
`
`
`
`ii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Case: IPR2015-01032
`Patent: 8,689,472
`
` Page(s)
`
`Cases
`Bettcher Industries, Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) .............................................................................. 3
`
`EMI Group North America, Inc. v. Cypress Semiconductor Corp.,
`268 F.3d 1342 (Fed. Cir. 2001) ............................................................................ 2
`
`Gemtron Corp. v. Saint-Gobain Corp.,
`572 F.3d 1371 (Fed. Cir. 2009) ............................................................................ 1
`
`Haberman v. Gerber Products Co.,
`236 F. App’x 592 (Fed. Cir. 2007) ....................................................................... 4
`
`Hockerson-Halberstadt, Inc. v. Avia Group International, Inc.,
`222 F.3d 951 (Fed. Cir. 2000) .............................................................................. 5
`
`Leggett & Platt, Inc. v. VUTEk, Inc.,
`537 F.3d 1349 (Fed. Cir. 2008) ............................................................................ 2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc), cert. denied,
`546 U.S. 1170 (2006) ............................................................................................ 2
`
`Scripps Clinic & Research Foundation v. Genentech, Inc.,
`927 F.2d 1565 (Fed. Cir. 1991), overruled in part on other
`grounds by Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282
`(Fed. Cir. 2009) ..................................................................................................... 3
`
`Suffolk Tech., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) ............................................................................ 1
`
`Trustees of Columbia University in City of New York v.
`Symantec Corp.,
`No. 2015-1146, 2016 WL 386068 (Fed. Cir. Feb. 2, 2016) ................................. 1
`
`
`
`iii
`
`
`
`Case: IPR2015-01032
`Patent: 8,689,472
`
`I.
`
`PRELIMINARY STATEMENT
`
`The Board recognized in its Decision to Institute (Paper 12, “Dec.”) that it is
`
`more likely than not that U.S. Patent No. 6,085,448 (Ex. 1003, “Gale”) anticipates
`
`claims 15-17 of U.S. Patent No. 8,689,472 (Ex. 1001, “the ’472 patent”). Nothing
`
`in the Patent Owner’s Response (Paper 16, “Resp.”) of ESCO Corporation
`
`(“ESCO”) calls that into question. The Board’s conclusions are supported by the
`
`references and Mr. Lee Horton’s testimony, and ESCO fails to introduce any
`
`evidence from the perspective of one of ordinary skill in the art to the contrary,
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`relying instead on unsupported attorney argument. Accordingly, claims 15-17 of
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`the ’472 patent should be cancelled for the reasons presented in the Petition
`
`(Paper 2, “Pet.”).
`
`II. THE BOARD CORRECTLY DETERMINED THAT CLAIMS 15-17
`ARE UNPATENTABLE IN THE INSTITUTION DECISION
`A. ESCO provides no expert testimony to support its attorney
`arguments
`
`Mere attorney argument alone is insufficient to undermine credible
`
`testimony
`
`from expert, Mr. Lee Horton of Petitioner Caterpillar
`
`Inc.
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`(“Caterpillar”). See Suffolk Tech., LLC v. AOL Inc., 752 F.3d 1358, 1367 (Fed. Cir.
`
`2014); see also Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.
`
`Cir. 2009) (noting that “unsworn attorney argument . . . is not evidence”). Claims
`
`are construed based on the understanding of one of ordinary skill in the art. Trs. of
`
`Columbia Univ. in City of New York v. Symantec Corp., No. 2015-1146, 2016 WL
`
`1
`
`
`
`Case: IPR2015-01032
`Patent: 8,689,472
`386068, at *2 (Fed. Cir. Feb. 2, 2016); see also Phillips v. AWH Corp., 415 F.3d
`
`1303, 1313 (Fed. Cir. 2005) (en banc), cert. denied, 546 U.S. 1170 (2006). And
`
`ESCO has failed to provide evidence regarding how one of ordinary skill in the art
`
`would understand the claim terms that it identifies in its Response. The only
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`evidence in this case regarding how one of ordinary skill in the art would
`
`understand the claim terms is from Mr. Horton.
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`Furthermore, the determination of whether a feature is inherent in a prior art
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`reference is viewed from the perspective of one of ordinary skill in the art.
`
`EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1350-51
`
`(Fed. Cir. 2001). Although ESCO spends almost three quarters of its Response
`
`attempting to erroneously frame Caterpillar’s arguments, supported by Mr. Horton,
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`as amounting to inherency contentions, ESCO fails to provide any evidence of
`
`whether one of ordinary skill in the art would agree with ESCO’s positions.
`
`B.
`
`The Board correctly determined that Caterpillar provided
`sufficient evidence showing that Gale discloses a lock capable of
`being secured in a release position
`
`When a claim uses functional language rather than structural recitations, the
`
`claim limitation is anticipated as long as the prior art is capable of functioning
`
`according to the claimed function. Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d
`
`1349, 1354 (Fed. Cir. 2008). Here, Caterpillar provided evidence demonstrating
`
`that Gale’s lock is capable of being secured, and the Board agreed. The Board
`
`2
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`stated that Gale “expressly supports Caterpillar’s contention that retainer 76 can be
`
`positioned within opening 64 by describing that retainer 76 may be compressed to
`
`a length ‘equal to or less than retainer opening length L1.’” Dec. 19 (quoting
`
`Ex. 1003 at 4:15-17). The Board then concluded that retainer 76 would be
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`“releasably securable” in the release position because, “[o]nce compressed, the
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`spring force generated by spring portion 86 would make retainer 76 unlikely to
`
`give way from tooth 14.” Id. Both of these conclusions were correct.
`
`ESCO attacks the Board’s conclusions, contending that Caterpillar failed to
`
`show that Gale’s lock is “capable of being unlikely to give way.” Resp. 7. ESCO
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`cites to Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir.
`
`2011), which is inapposite for several reasons. Bettcher indicates that capability
`
`should be addressed based on the understanding of one of ordinary skill in the art.
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`Id. at 641 (“[A]nticipation requires there to be ‘no difference between the claimed
`
`invention and the reference disclosure as viewed by a person of ordinary skill in
`
`the art.’” (quoting Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d
`
`1565, 1576 (Fed. Cir. 1991), overruled in part on other grounds by Abbott Labs. v.
`
`Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir. 2009))). And the patent
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`owner/plaintiff in Bettcher provided explicit evidence in the form of drawings to
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`challenge the capability of the prior art to serve the claimed purpose. Id. at 639.
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`Even with this contradictory evidence, the Bettcher court did not mandate a result,
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`3
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`holding instead that “the jury was free to draw whatever conclusions manifested
`
`themselves from the evidence presented.” Id. at 640. Here, the Board was likewise
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`free to draw the conclusions that it drew.
`
`ESCO also relies on a nonprecedential decision, Haberman v. Gerber Prods.
`
`Co., 236 F. App’x 592 (Fed. Cir. 2007), and contends that Haberman’s discussion
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`about the oral suction or squeezing necessary to open a child’s “sippy cup” is
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`illustrative of Caterpillar’s alleged failings. Resp. 7-8 (citing Haberman,
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`236 F. App’x at 594, 598). However, Haberman is nothing like this case. In
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`Haberman, the patent challenger’s own expert admitted that the prior art did not
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`disclose the contested limitation. Haberman, 236 F. App’x at 598. And the patent
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`challenger had admitted before the PTO that certain valves, similar to the prior art
`
`valves, were incapable of opening by suction alone. Id. No such contradictory
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`evidence exists here. Indeed, ESCO has provided no evidence whatsoever.
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`Mr. Horton’s testimony stands unrebutted.
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`Gale explicitly states that the “spring portion 86 is adapted to allow the
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`forcible compression of the retainer 76 from its longer non-compressed length L2
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`to a shorter compressed length sufficient equal to or less than the retainer opening
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`length L1 to permit the insertion of the flanges through the retainer opening 64.”
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`Ex. 1003 at 4:13-18. ESCO’s arguments that this explicit language in Gale must
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`mean that retainer 76 is compressed “at an angle” (Resp. 16) are unsupported and
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`4
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`unreasonable. Mr. Horton has testified how one of ordinary skill in the art would
`
`understand the Gale disclosure. Furthermore, Mr. Horton’s testimony is consistent
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`with the plain meaning of the text. Thus, ESCO’s conflated proposal is
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`unsupported and contrary to the understanding of one of ordinary skill in the art.
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`ESCO nitpicks the draftsman’s skills, making much of the dimensions and
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`features of Mr. Horton’s illustrative drawings. Resp. 12-15. However, unless a
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`reference provides dimensions or states that the drawings are to scale, arguments
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`based on measurement of the drawing features are of little value. See Hockerson-
`
`Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)
`
`(“[I]t is well established that patent drawings do not define the precise proportions
`
`of the elements and may not be relied on to show particular sizes if the
`
`specification is completely silent on the issue.”). In Gale, there is no indication that
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`the drawings were done to scale, and Mr. Horton’s drawings were for illustrative
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`purposes, not for manufacturing a version of the device.
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`Finally, despite ESCO’s allegation to the contrary (Resp. 10-11), the Petition
`
`and Mr. Horton’s Declaration (Ex. 1002) support the Board’s finding that “the
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`spring force generated by spring portion 86 would make retainer 76 unlikely to
`
`give way from tooth 14.” Dec. 19. For example, the Horton Declaration describes
`
`that a user must compress retainer 76 into retainer opening 64 and cites to Gale,
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`which notes that “forcible compression” is necessary to move retainer 76 into
`
`5
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`retainer opening 64. Ex. 1002 ¶¶ 27, 54; Ex. 1003 at 4:13-18. The Horton
`
`Declaration further describes that retainer 76 is secured to tooth 14 in the release
`
`position by retainer 76 being compressed in retainer opening 64 and flanges 92
`
`pressing against opposing end surfaces 66, 68 of tooth 14. Ex. 1002 ¶ 111. Finally,
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`the Horton Declaration notes that the use of a hammer or other tool would be
`
`required to tap retainer 76 through retainer opening 64 from the release position
`
`and into retainer pocket 38. Id. ¶ 28.
`
`ESCO’s arguments that the compression of spring portion 86 would not
`
`provide sufficient force to hold retainer 76 in the release position run contrary to
`
`the arguments ESCO provided in its Corrected Preliminary Response (Paper 9,
`
`“Prelim. Resp.”). Specifically, ESCO argued that any increased compression
`
`would make the Gale retainer too “difficult to pry out” through retainer opening 64
`
`(Prelim. Resp. 51), therefore admitting that Gale’s retainer is already designed to
`
`provide forces that must be overcome during the removal process.
`
`Thus, the evidence on the record supports the Board’s conclusion that Gale
`
`discloses a lock that is capable of being secured in the release position.
`
`C. The Board properly construed the “during installation” limitation
`of claim 15 in the Institution Decision
`
`According to ESCO, the claim term “to reduce the risk of dropping the lock
`
`during installation” requires a “timeframe that includes at least a moment before
`
`the wear member has been placed on the base,” and requires that the lock “is
`
`6
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`securable in the hold position before the wear member is placed on the base (i.e.,
`
`during installation).” Resp. 19-20. In other words, ESCO is arguing that the claim
`
`limitation “during installation” requires the lock to be secured in the hold (i.e.,
`
`locked) position during the second-to-last step of the installation process (i.e.,
`
`while the wear member is placed on the adapter). This is not the correct
`
`construction.
`
`As an initial matter, the ’472 patent never discloses installing the wear
`
`member on the base with the lock in the hold position, nor could the wear member
`
`be installed in this fashion. Ex. 1001 at 10:62-11:5. The lock would interfere,
`
`preventing the wear member from sliding onto the base. Id. at 10:42-45, Figs. 8, 9,
`
`30, 30a. Rather, the claim phrase requires that the “lock does not fall out when the
`
`wear member is being installed on a base.” Pet. 20-21 (quoting Ex. 1002 ¶ 46).
`
`Mr. Horton agreed
`
`that
`
`this construction would be consistent with
`
`the
`
`understanding of one of ordinary skill in the art. Ex. 1002 ¶ 46. Thus, the claim
`
`requires that the lock be capable of being secured at some point during installation,
`
`but it does not require that the lock be secured in the hold orientation at every
`
`instant during the installation process.
`
`Applying this construction to the prior art shows that Gale is anticipatory.
`
`Indeed, Gale’s installation is not complete until after the wear member is slid onto
`
`the adapter and retainer 76 is locked into place within opening 64 and pocket 38.
`
`7
`
`
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`Case: IPR2015-01032
`Patent: 8,689,472
`Thus, this step of locking retainer 76 into the hold position—a position at which
`
`the lock is held firmly in place—is “during installation.”
`
`D. Caterpillar, along with Caterpillar’s expert, clearly explained how
`Gale’s lock is “releasably securable” to the wear member
`As acknowledged by the Board in the Institution Decision, Caterpillar
`
`provided evidence that Gale’s lock is “releasably securable to the wear member
`
`(positionable so that it is unlikely to give way from the wear member unless it is
`
`released from the wear member) in both the hold and release positions.”
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`Dec. 12-13, 18-19. ESCO attempts to confuse the issues relevant to this proceeding
`
`by citing solely to the Board’s Institution Decision in IPR2015-00409 when
`
`alleging that Caterpillar failed to explain how Gale’s lock is “releasably securable”
`
`to the wear member when the lock is in the hold position. Resp. 20-21.
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`As explicitly discussed in the Petition and supported by the Horton
`
`Declaration, “[r]etainer 76 [of Gale] is secured to tooth 14 in the hold-inserted
`
`configuration by flanges 92 engaged with an interior surface 94 . . . of tooth 14 as a
`
`result of spring portion 86 forcing retainer 76 to expand, a first elevational portion
`
`88 of retainer 76 being positioned in retainer pocket 38, and a second elevational
`
`portion 90 positioned in retainer opening 64.” Pet. 51 (emphasis added); see also
`
`Ex. 1002 ¶ 112; Ex. 1003 at 4:18-28, 7:35-38. Gale specifically states that “[w]hen
`
`the retainer 76 is in its [hold] position, as best shown in FIG. 3, the flanges 92
`
`extend beyond the retainer opening 64 and are positioned to engage an interior
`
`8
`
`
`
`Case: IPR2015-01032
`Patent: 8,689,472
`surface 94 of the top sidewall 50 to lock the retainer 76 in place in its tooth
`
`retaining position wherein the first elevational portion 88 of the retainer 76 is
`
`disposed in the retainer pocket 38 where one side 78 (FIG. 2) of the retainer 76 is
`
`in an abutting relation with the second abutment 42 and the second elevational
`
`portion 90 is positioned in the retainer opening 64 where the other side 80 thereof
`
`is in an abutting relation with the first abutment 70.” Ex. 1003 at 4:18-28
`
`(emphasis added).
`
`Retainer 76 is secured to the wear member when a portion of retainer 76 is
`
`secured to tooth 14 within retainer opening 64 and abutting first abutment 70.
`
`Therefore, Gale explicitly describes retainer 76 being secured to the wear member
`
`in the hold position. As acknowledged by the Board in the Institution Decision, and
`
`as discussed above, it is irrelevant that retainer 76 is secured to the wear member at
`
`the end of the installation of the wear member onto the adapter. See Dec. 13,
`
`17-19; see supra Part II.C.
`
`In addition, the Petition and Horton Declaration further describe that to
`
`remove or release retainer 76 from the hold position, “a screwdriver or other tool is
`
`used to pry one end of retainer 76 such that retainer 76 is compressed and removed
`
`from retainer pocket 38.” Pet. 12; see also Ex. 1002 ¶ 29; Ex. 1003 at 7:40-44.
`
`Gale specifically states that a “screwdriver is . . . inserted into one of the tool slots
`
`104 and leverage is applied to the retainer 76 to cause it to be compress[ed] and
`
`9
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`pried out of the retainer pocket [38] and retainer opening 64.” Ex. 1003 at 7:40-44.
`
`Therefore, Gale also explicitly describes retainer 76 being releasable from the wear
`
`member when in the hold position.
`
`Although ESCO did not specifically address the release position in this
`
`argument, retainer 76 is also releasably securable to the wear member as discussed
`
`supra at Part II.B. Thus, Gale explicitly discloses a lock releasably securable to the
`
`wear member in both the hold and release positions.
`
`III. CONCLUSION
`For these reasons, and the reasons stated in the Petition, the claims in this
`
`trial are unpatentable and should be cancelled.
`
`Dated: March 25, 2016
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`Respectfully submitted,
`
`By: /Anthony M. Gutowski/
`Anthony M. Gutowski
`Reg. No. 38,742
`Daniel C. Cooley
`Reg. No. 59,639
`Alyssa J. Holtslander
`Reg. No. 64,026
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`10
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`
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`Case: IPR2015-01032
`Patent: 8,689,472
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER’S REPLY was
`
`served on March 25, 2016, via Email to the following parties:
`
`Charles W. Shifley
`Binal J. Patel
`Timothy J. Rechtien
`ESCO472IPR@bannerwitcoff.com
`
`/Lisa C. Hines/
` Lisa C. Hines
`Litigation Clerk
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`11
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`
`
`Date: March 25, 2016
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