Filed on behalf of: Caterpillar Inc.
`By: Anthony M. Gutowski
`
`Daniel C. Cooley
`
`Alyssa J. Holtslander
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: tony.gutowski@finnegan.com
`
`daniel.cooley@finnegan.com
`
`alyssa.holtslander@finnegan.com
`
`
`
`
`
`
`
`
`
`
`Paper No. __
`Filed: December 19, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`ESCO CORPORATION,
`Patent Owner
`______________________
`
`IPR2015-00409
`Patent No. 8,689,472
`______________________
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`Page 1 of 66
`
`CATERPILLAR EXHIBIT 1014
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`TABLE OF CONTENTS
`
`Introduction .................................................................................................................... 1 
`
`I. 
`
`II.  Mandatory Notices ........................................................................................................ 2 
`
`III.  Payment of Fees ............................................................................................................. 2 
`
`IV.  Grounds for Standing ................................................................................................... 3 
`
`A. 
`
`At Least One Challenged Claim Is Unpatentable ......................................... 3 
`
`V. 
`
`Statement of Precise Relief Requested for Each Claim Challenged ...................... 3 
`
`VI.  Background of the Technology ................................................................................... 5 
`
`A. 
`
`B. 
`
`The ’472 Patent .................................................................................................. 5 
`
`Scope and Content of the Prior Art ................................................................ 6 
`
`VII.  Claim Construction ..................................................................................................... 14 
`
`A.  One of Ordinary Skill in the Art ................................................................... 15 
`
`B. 
`
`Claim Terms ..................................................................................................... 15 
`
`VIII.  Claims 1-20 of the ’472 Patent Are Unpatentable .................................................. 19 
`
`A. 
`
`B. 
`
`Claims 1-20 Are Unpatentable in View of Emrich Because Claims
`1-20 Are Obvious Under 35 U.S.C. § 103(a) and Because Claims
`14-20 Are Anticipated Under 35 U.S.C. § 102(b) ....................................... 19 
`
`Claims 1-20 Are Unpatentable as Obvious Under
`35 U.S.C. § 103(a) over Emrich in View of Pippins ...................................... 57 
`
`IX.  Conclusion .................................................................................................................... 60 
`
`
`
`
`
`
`
`i
`
`Page 2 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`
`Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp.,
`340 U.S. 147 (1950) ............................................................................................................. 1
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................... 1, 19
`
`Ex Parte Masham,
`2 U.S.P.Q.2d 1647 (B.P.A.I. Feb. 26, 1987) .................................................................. 18
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................................... 15
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ........................................................................................ 15
`
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ........................................................................................ 15
`
`Federal Statutes
`
`35 U.S.C. § 102 ........................................................................................................................... 3
`
`35 U.S.C. § 102(a) ...................................................................................................................... 4
`
`35 U.S.C. § 102(b)............................................................................................................... 4, 19
`
`35 U.S.C. § 102(e) ...................................................................................................................... 4
`
`35 U.S.C. § 103 ........................................................................................................................... 3
`
`35 U.S.C. § 103(a) ......................................................................................................... 4, 19, 57
`
`35 U.S.C. § 314(a) ...................................................................................................................... 3
`
`Federal Regulations
`
`37 C.F.R. § 42.15(b) .................................................................................................................. 2
`
`37 C.F.R. § 42.103(a) ................................................................................................................. 2
`
`
`
`ii
`
`Page 3 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`37 C.F.R. § 42.104(a) ................................................................................................................. 3
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) ........ 15
`
`
`
`
`
`
`
`
`iii
`
`Page 4 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`LIST OF EXHIBITS
`
`Exhibit 1001.
`
`U.S. Patent No. 8,689,472 to Carpenter et al., issued April 8, 2014
`(“the ’472 patent”)
`
`Exhibit 1002.
`
`Declaration of Lee A. Horton, P.E., with C.V.
`
`Exhibit 1003.
`
`Exhibit 1004.
`
`Exhibit 1005.
`
`Exhibit 1006.
`
`Exhibit 1007.
`
`Exhibit 1008.
`
`Exhibit 1009.
`
`Exhibit 1010.
`
`Exhibit 1011.
`
`Exhibit 1012.
`
`
`
`
`
`U.S. Patent No. 5,666,748 to Emrich et al., issued September 16,
`1997 (“Emrich”)
`
`U.S. Patent No. 6,119,378 to Pippins, issued September 19, 2000
`(“Pippins”)
`
`U.S. Patent Application Publication No. 2005/0229442 to Jones
`et al., published October 20, 2005 (“Jones”)
`
`U.S. Patent No. 6,030,143 to Kreitzberg, issued February 29, 2000
`(“Kreitzberg”)
`
`U.S. Patent No. 5,596,908 to Hall, issued January 28, 1997
`(“Hall”)
`
`U.S. Patent Application Publication No. 2005/0173203 to
`Buckner, published August 11, 2005 (“Buckner”)
`
`U.S. Patent No. 6,230,676 to Pryba et al., issued May 15, 2001
`(“Pryba”)
`
`U.S. Patent No. 4,210,374 to Churla, issued July 1, 1980
`(“Churla”)
`
`Defendants’ Preliminary Identification of Proposed Claim
`Constructions and Supporting Intrinsic and Extrinsic Evidence
`from District of Nevada Case No. 2-14-cv-00529
`
`ESCO’s LR 16.1-14 Preliminary Proposed Claim Constructions
`and Identification of Supporting Intrinsic and Extrinsic Evidence
`from District of Nevada Case No. 2:14-cv-00529
`
`iv
`
`Page 5 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`
`I.
`
`Introduction
`
`All of the claims of U.S. Patent No. 8,689,472 (“the ’472 patent”) (Ex. 1001)
`
`are unpatentable. The ’472 patent discloses and claims a wear assembly for excavating
`
`equipment, including a wear member and a lock that secures the wear member to a
`
`base. The ’472 patent alleges that one “aspect of the invention” is that the lock is
`
`“integrally secured to the wear member,” which permits “shipping and storage as a
`
`single integral component.” Ex. 1001 at 2:56-58. But all of these features were known
`
`years prior to the date of the ’472 patent’s alleged “invention.” Indeed, U.S. Patent
`
`No. 5,666,748 to Emrich et al. (“Emrich”) (Ex. 1003) discloses a wear assembly
`
`including a lock secured to a wear member for securing the wear member to a base.
`
`Any claimed feature not disclosed by Emrich would have resulted from a
`
`predictable and common-sense implementation of Emrich or would have been
`
`obvious in view Emrich and other prior art references, such as U.S. Patent No.
`
`6,119,378 to Pippins (“Pippins”) (Ex. 1004). Thus, the ’472 patent at best “unites old
`
`elements with no change in their respective functions,” thereby “withdraw[ing] what
`
`already [was] known into the field of its monopoly and diminish[ing] the resources
`
`available to skillful men.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007)
`
`(quoting Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152-53
`
`(1950)). Accordingly, claims 1-20 of the ’472 patent are unpatentable and should be
`
`canceled.
`
`
`
`
`
`1
`
`Page 6 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`
`II. Mandatory Notices
`
`Real Party-in-Interest: Caterpillar Inc.
`
`Related Matters: ESCO Corp. v. Cashman Equipment Co. et al., No. 2:14-cv-
`
`00529 (D. Nev. 2014); ESCO Corp. v. Cashman Equipment Co. et al., No. 2:12-cv-01545
`
`(D. Nev. 2012).
`
`Lead Counsel: Anthony M. Gutowski: Reg. No. 38,742; telephone:
`
`571.203.2774; tony.gutowski@finnegan.com.
`
`Back-up Counsel: Daniel C. Cooley: Reg. No. 59,639; telephone
`
`571.203.2778; daniel.cooley@finnegan.com.
`
`Back-up Counsel: Alyssa J. Holtslander: Reg. No. 64,026; telephone
`
`202.408.4281; alyssa.holtslander@finnegan.com.
`
`Service Information: Please send all correspondence to the lead counsel at:
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; 901 New York Ave., NW,
`
`Washington, DC 20001. Petitioner consents to service by e-mail at the following
`
`addresses: tony.gutowski@finnegan.com, daniel.cooley@finnegan.com,
`
`alyssa.holtslander@finnegan.com.
`
`III. Payment of Fees
`
`The required fees are submitted herewith in accordance with 37 C.F.R.
`
`§§ 42.103(a) and 42.15(b). If any additional fees to be paid by the Petitioner are due
`
`during this proceeding, the Office is authorized to charge such fees to Deposit
`
`Account No. 06-0916.
`
`
`
`2
`
`Page 7 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`
`IV. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’472 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’472 patent challenging the patent claims on the
`
`grounds identified in this petition.
`
`A.
`
`At Least One Challenged Claim Is Unpatentable
`
`As further detailed below, claims 1-20 of the ’472 patent are each unpatentable
`
`under 35 U.S.C. §§ 102 and/or 103. Thus, there is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the claims challenged in this
`
`petition. 35 U.S.C. § 314(a).
`
`V.
`
`Statement of Precise Relief Requested for Each Claim Challenged
`
`Claims 1-20 of the ’472 patent are unpatentable and should be canceled in view
`
`of the following prior art references and grounds of unpatentability.
`
`Reference 1: U.S. Patent No. 5,666,748 to Emrich et al. (“Emrich”) (Ex. 1003).1
`
`Reference 2: U.S. Patent No. 6,119,378 to Pippins (“Pippins”) (Ex. 1004).
`
`Reference 3: U.S. Patent Application Publication No. 2005/0229442 to Jones
`
`et al. (“Jones”) (Ex. 1005).
`
`1 Emrich is ESCO’s own patent. During prosecution of the application that matured
`
`into the ’472 patent, Emrich was cited to the PTO in an Information Disclosure
`
`Statement; however, the Examiner never applied Emrich.
`
`
`
`3
`
`Page 8 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`Reference 4: U.S. Patent No. 6,030,143 to Kreitzberg (“Kreitzberg”) (Ex. 1006).
`
`Reference 5: U.S. Patent No. 5,596,908 to Hall (“Hall”) (Ex. 1007).
`
`Reference 6: U.S. Patent Application Publication No. 2005/0173203 to
`
`Buckner (“Buckner”) (Ex. 1008).
`
`Reference 7: U.S. Patent No. 6,230,676 to Pryba et al. (“Pryba”) (Ex. 1009).
`
`Reference 8: U.S. Patent No. 4,210,374 to Churla (“Churla”) (Ex. 1010).
`
`Ground 1: Claims 14-20 are unpatentable under 35 U.S.C. § 102(b) as
`
`anticipated by Emrich.
`
`Ground 2: Claims 1-20 are unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over Emrich.
`
`Ground 3: Claims 1-20 are unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over Emrich and Pippins.
`
`The ’472 patent issued from a pre-AIA patent application filed on December 5,
`
`2012. The ’472 patent claims priority back, through a chain of multiple divisional
`
`applications, to provisional application No. 60/787,268, filed on March 30, 2006.
`
`Ex. 1001 at Cover Page. All of the prior art references cited by Petitioner, except
`
`Buckner, were published at least one year prior to March 30, 2006, and therefore they
`
`are prior art to the ’472 patent under 35 U.S.C. § 102(b). Buckner was published less
`
`than one year prior to March 30, 2006, but it is prior art under at least 35 U.S.C.
`
`§ 102(a) and (e) even if the ’472 patent is entitled to the priority date of the
`
`provisional application.
`
`
`
`4
`
`Page 9 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`
`VI. Background of the Technology
`A.
`
`The ’472 Patent
`
`The ’472 patent relates to wear assemblies for excavating equipment. Ex. 1001
`
`at 1:45-48. The disclosed wear assembly 10 (shown below) includes a wear member
`
`12, which may be a tooth, a 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)
`
`Lock 17 pivots in hole 81 of wear member 12 between a “release” (unlocked)
`
`position that allows a user to install wear member 12 on base 15, id. at FIG. 23, and a
`
`“hold” (locked) position that holds wear member 12 to base 15, id. at FIG. 25.
`Lock
`
`Wear
`Member
`
`Adapter
`
`Tool
`
`
`
`
`
`Lock moving from release to hold position (’472 Patent FIGS. 23 and 25)
`
`
`
`5
`
`Page 10 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`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)
`
`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 2:56-3:7. See Horton Decl. (“Ex. 1002”) ¶¶ 18-22.
`
`B.
`
`Scope and Content of the Prior Art
`
`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 well
`
`known at the time of the alleged invention. Emrich alone discloses all of these features.
`
`
`
`6
`
`Page 11 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`Other patents, including Pippins (Ex. 1004), Jones (Ex. 1005), Kreitzberg (Ex. 1006), and
`
`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. Ex. 1002 ¶ 23.
`
`1. Emrich
`
`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 1:5-19, and more specifically, a wear cap 10
`
`that protects an adapter 28 for an excavating tooth, id. at 1:62-66.
`
`Wear Cap
`
`Tabs
`
`Concave Surface (Cavity)
`
`Convex Surface
`
`Recesses
`
`Adapter
`
`Wear assembly including a wear cap and an adapter (Emrich FIG. 2)
`
`
`
`7
`
`Page 12 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`Wear cap 10 includes “an outer or wear surface 14” and a concave “inner or
`
`mounting surface 16” that forms a cavity. Id. at 3:66-4:4, FIG. 8; Ex. 1002 ¶ 24. A
`
`user assembles wear cap 10 and 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 top of adapter 28. Ex. 1003 at 3:66-4:24; Ex. 1002 ¶ 24.
`
`Emrich discloses a lock 40 to secure wear cap 10 to adapter 28. Ex. 1003 at
`
`4:62-63. Lock 40 is rotatable between an unlocked (release) position in which a rigid
`
`hub 64 protrudes into an opening 90 in wear cap 10 (see annotated FIG. 16 below),
`
`and a locked (hold) position in which hub 64 protrudes into the adapter’s recess 44,
`
`thereby securing wear cap 10 to adapter 28 (see annotated FIGS. 18 and 20 below).
`
`Id. at 5:57-61; Ex. 1002 ¶¶ 25, 30-35.
`Hub of
`Opening in Wear Cap
`Lock
`
`Arrow
`showing
`rotation of
`lock
`
`Wear
`Cap
`
`Adapter
`(colored
`gray)
`
`Recess in Adapter
`Lock in “unlocked” position (left) and “locked” position (right) (Emrich FIGS. 16 and 18)
`
`
`
`Lock 40 moves between its unlocked position and its locked position by
`
`rotating about its front shaft 74 and rear shaft 76. Ex. 1003 at 5:4-15, FIG. 20
`
`(annotated below). Rear shaft 76 is positioned and held in a longitudinal bore 94 in
`
`
`
`8
`
`Page 13 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`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. Ex. 1002 ¶ 26.
`
`Opening in Wear Cap
`
`Rear Shaft
`
`Wear Cap
`
`Front Shaft
`
`Recess of Adapter
`
`
`Hub of Lock
`(locked position)
`Side cross-sectional view of lock in locked position (Emrich FIG. 20)
`
`
`
`Hub of Lock
`(unlocked position)
`
`Opening in Wear Cap
`
`Wear Cap
`
`
`
`Adapter
`(colored gray)
`
`
`Adapter
`(colored gray)
`
`
`
`Side cross-sectional view revised to depict lock in unlocked position (Emrich FIG. 20)
`
`A user can rotate lock 40 with a tool, such as a screwdriver. Ex. 1003 at 5:61-
`
`64, 6:27-29. Lock hub 64 includes depressions 73 on wall 70 and notches 105 on wall
`
`
`
`9
`
`Page 14 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`72 that receive the tool for rotating lock 40 between its locked position and unlocked
`
`position. Id. at 5:61-64, 6:27-29, FIGS. 11, 12 (annotated below); Ex. 1002 ¶ 27.
`
`Notch
`
`L-shaped
`Socket
`
`Rigid Hub
`
`Depression
`Front and side views of lock (Emrich FIGS. 11 and 12)
`
`
`
`Lock 40 also includes resilient latches 78 that secure lock 40 in both its locked
`
`position and its unlocked position, and prevent unintended rotation of lock 40.
`
`Ex. 1003 at 5:18-27; Ex. 1002 ¶ 28. Each resilient latch 78 includes an elastomer 82
`
`and a rigid metallic tip 84. Ex. 1003 at 5:22-24. Resilient latches 78 are secured in
`
`sockets 80 in hub 64. Id. at FIG. 11 (annotated above); Ex. 1002 ¶ 28.
`
`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.
`
`Ex. 1003 at 5:52-53, FIG. 16 (annotated below); Ex. 1002 ¶ 29. When lock 40 is in the
`
`locked position, elastomers 82 cause tips 84 to engage rails 96 (i.e., lower walls of
`
`opening 90). Ex. 1002 ¶ 29; Ex. 1003 at 5:66-6:7, FIG. 18 (annotated below).
`
`
`
`
`
`10
`
`Page 15 of 66
`
`

`

`Upper Wall of Opening
`
`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`Rail or
`Lower
`Wall of
`Opening
`
`Wear Cap
`
`Adapter
`
`Tip
`Tip Elastomer
`Lock in unlocked (left) and locked (right) positions (Emrich FIGS. 16 and 18)
`
`
`
`
`
`Emrich states that “[t]he engagement of latches [78] against rails 96 functions to
`
`releasably retain hub 64 in its locked position.” Ex. 1003 at 6:23-24. Lock 40 of Emrich
`
`is also secured in its locked and unlocked positions by various surfaces that surround
`
`lock 40 (see, e.g., annotated FIGS. 20 above). Ex. 1002 ¶¶ 59-61.
`
`In sum, Emrich discloses concepts familiar to those of ordinary skill in the art at
`
`the time of the alleged invention: 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.
`
`Id. ¶ 36.
`
`2. Jones and Kreitzberg
`
`Persons of ordinary skill in the art also understood that construction tools are
`
`subject to high forces and vibrations, which can cause a lock to jostle, wear, and
`
`loosen. Id. ¶ 37; Ex. 1005 ¶¶ [0004], [0006], [0010]. If a lock wears or loosens
`
`
`
`11
`
`Page 16 of 66
`
`

`

`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`sufficiently, it can fail and “expose[] the adapter to premature wear and possible
`
`damage to the equipment.” Ex. 1006 at 1:64-67.
`
`To minimize wear on parts subject to vibrations, the parts must fit tightly
`
`together. Ex. 1002 ¶ 38. This was another fact well known to those of ordinary skill in
`
`the art at the time of the invention. Id.; 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. Ex. 1002 ¶ 38. 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.” Ex. 1005
`
`¶ [0010]. Kreitzberg 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 invention to use elastomeric
`
`members to secure locks of wear parts such that the locks do not loosen due to
`
`vibration and wear. Ex. 1002 ¶ 38.
`
`3. Pippins, Hall, Buckner, Pryba, and Churla
`
`In addition to using elastomeric members, persons of ordinary skill in the art at
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`the time of the invention used a variety of other well-known means to secure locks of
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`wear parts, including threads, snap fits, and friction fits. Id. ¶ 39. Pippins, for example,
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`secures a pin or lock 202 in a bore of a wear assembly using a spring-loaded ball
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`bearing 203 that engages with a slot 201. Ex. 1004 at 6:9-17, FIG. 8 (annotated
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`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`below); Ex. 1002 ¶¶ 40-41. Pippins states that this arrangement provides “rapid and
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`easy replacement of sacrificial machine parts.” Ex. 1004 at Abstract.
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`Slot
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`Insert
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`Ball Bearing
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`Spring
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`Pin (lock)
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`
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`Side cross-sectional view of pin and insert (Pippins FIG. 8)
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`Securing locking parts to prevent them from falling out and becoming lost was
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`known not only in the wear-part industry, but was also a common-sense objective
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`across many industries at the time of the alleged invention. Ex. 1002 ¶ 42. Those of
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`ordinary skill in the art had long understood that a lock assembly “should provide
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`some way to secure the component parts, such as the lock, to prevent them from
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`being lost when handled or shipped.” Id. For example, Hall, which relates to a
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`lockable cable assembly for a bulkhead, recognizes that some prior art lock assemblies
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`were “susceptible to inadvertent detachment and loss during shipping.” Ex. 1007 at
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`1:29-32. Hall therefore provides a “first detent means [that] is included for releasably
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`holding the lock in the unlocked position as well as a second detent means for
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`releasably holding the lock 40 in the locked position.” Id. at 3:29-32. To ensure that
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`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`Hall’s lock is not lost, “[d]uring shipping, the detent tab 54 is disposed in the detent
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`openings 56 of the legs 46.” Id. at 3:49-50; Ex. 1002 ¶ 42.
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`The prior art also recognized additional reasons for securing parts. See U.S.
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`Patent Application Publication No. 2005/0173203 to Buckner (“Buckner”) (Ex. 1008)
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`¶ [0005] (making two parts integral, because when separate, they can “become lost or
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`dislodged during shipping, installation and/or use and add to the cost and complexity
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`of manufacturing and installing [the parts]”); U.S. Patent No. 6,230,676 to Pryba et al.
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`(“Pryba”) (Ex. 1009) at 1:58-63 (stating that the prior art designs are “more susceptible
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`to having loose, individual component parts lost during shipping and handling,” and
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`result in “inventory burden”); U.S. Patent No. 4,210,374 to Churla (“Churla”)
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`(Ex. 1010) at 1:21-26 (stating that the prior art components suffer from various
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`drawbacks, the most serious of which being that during storage and shipment, the
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`parts may come loose and be lost); Ex. 1002 ¶ 43.
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`Thus, the motivations and objectives described in the ’472 patent of decreasing
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`the risk of “losing the lock,” Ex. 1001 at 3:5-7, and securing the lock to the wear
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`member “for shipping and storage purposes,” Id. at Abstract, were known and
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`obvious at the time of the invention, as were the claimed concepts for achieving those
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`objectives. Ex. 1002 ¶ 43.
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`VII. Claim Construction
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`Claim terms are “generally given their ordinary and customary meaning,” which
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`is “the meaning that the term would have to a person of ordinary skill in the art in
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`question.” In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1313 (Fed. Cir. 2005) (en banc)). In the
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`present proceeding, the Board should apply the broadest reasonable interpretation
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`(“BRI”) standard to construe claim terms. Under the BRI standard, claim terms are
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`given their “broadest reasonable interpretation, consistent with the specification.” In re
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`Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Because the BRI standard is not normally
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`applied in district court litigations, the constructions in this proceeding may differ
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`from the constructions in ESCO Corp. v. Cashman Equipment Co. et al., No. 2:14-cv-
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`00529 (the “Nevada Litigation”). See Ex. 1011.
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`A. One of Ordinary Skill in the Art
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`A person of ordinary skill in the art at the time of the alleged invention of the
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`’472 patent would have a degree in mechanical engineering or equivalent, and three to
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`five years of machine design or application experience. Ex. 1002 ¶¶ 10-11. This level
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`of skill is approximate and more experience would compensate for less formal
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`education, and vice versa. Id.
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`B.
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`Claim Terms
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`All of the claim terms in the ’472 patent should be given their plain and
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`ordinary meaning under the BRI standard. However, to the extent that the Board
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`construes the following terms, they should be construed broadly and consistent with
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`the specification, as outlined below.
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`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
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`1.
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`“cavity”
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`To the extent that the Board construes “cavity,” as recited in independent claims
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`1 and 14, it should be construed to mean “a hollow space.” Id. ¶ 46. This construction
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`is consistent with the specification, which discloses a hollow space, defined by a
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`socket 16 that receives a base. Ex. 1001 at FIG. 3. The ’472 patent’s other usage of
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`the term “cavity” also supports this construction. Id. at 3:10-12, 9:34-36, FIG. 4.
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`Patent Owner has similarly proposed in the Nevada Litigation for cavity to be given
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`its plain and ordinary meaning or construed to mean “socket, pocket or space.”
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`Ex. 1012 at 3.
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`2.
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`“a lock secured to the wear member in the lock opening”
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`To the extent the Board finds it necessary to construe “a lock secured to the
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`wear member in the lock opening,” as recited in claims 1 and 14, it should be
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`construed to mean “a lock that is held to the wear member such that the lock is in the
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`lock opening.” Ex. 1002 ¶ 47. This construction is consistent with the specification,
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`which discloses lock 17 being held such that lock 17 is in the opening with part of
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`lock 17 protruding outwardly from through hole 81 in wear member 12 (i.e., the lock
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`is not entirely within the opening). See Ex. 1001 at FIGS. 29, 31.
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`3.
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`“the body and the resilient member are secured to each
`other for insertion in the lock opening as an integral unit”
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`The phrase “the body and the resilient member are secured to each other for
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`insertion in the lock opening as an integral unit,” as recited in claim 6 and similar
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`
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`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`language in claims 10 and 15, should be construed according to its plain and ordinary
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`meaning under BRI, or, if the Board finds it necessary, should be construed to mean
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`that “the body of the lock and the resilient member of the lock are held together such
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`that the lock can be inserted in the lock opening.” Ex. 1002 ¶ 48. This construction is
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`consistent with the broadest reasonable reading of the claim in line with the
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`specification, which states that “lock 17 is composed of a body 110, a resilient
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`member 112 and a shield 114 all bonded or otherwise secured together.” Ex. 1001 at
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`10:9-11, 10:62-65 (“Lock 17 is installed into wear member 12 (in the release position)
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`at the time of manufacture and shipped to a customer (FIG. 30a).”); see also Ex. 1012
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`at 7.
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`4.
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`“latch formation”
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`The term “latch formation” in claims 9, 11, and 14 should be given its broadest
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`reasonable plain and ordinary meaning. If the Board finds it necessary to construe the
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`term, it should be construed to mean a “structure that can engage.” Ex. 1002 ¶¶ 49-
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`50. This construction is consistent with the specification, which discloses that “[w]ide
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`end 105 [of lock 17] includes a latch formation 115” that “cooperates with end wall 87
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`to retain lock 17 in hold and release positions.” Ex. 1001 at 10:1-3; see also id. at
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`FIG. 22 (depicting via its varied cross-hatching, latch formation 115 combined or
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`included with the lock body); FIGS. 23, 25 (depicting latch formation 115 engaging
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`with end wall 87 and stop 95). Patent Owner has proposed the exact same
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`construction in the Nevada Litigation. Ex. 1012 at 8.
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`17
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`5.
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`U.S. Patent No. 8,689,472
`Petition for Inter Partes Review
`“being releasably securable in both hold and release
`positions to reduce the risk of dropping the lock during
`installation”
`
`Claim 15 is an apparatus claim reciting that the lock is releasably securable in
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`both hold and release positions “to reduce the risk of dropping the lock during
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`installation.” In construing this claim phrase, the Board should give no weight to
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`“reduc[ing] the risk of dropping the lock during installation,” which is a recitation of
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`intended purpose. Ex Parte Masham, 2 U.S.P.Q.2d 1647, 1648 (B.P.A.I. Feb. 26, 1987)
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`(“[A] recitation with respect to the manner in which a claimed apparatus is intended
`
`to be employed does not differentiate the claimed apparatus from a prior art
`
`apparatus satisfying the structural limitations of that claimed.”). And, thus, the Board
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`should construe the entire claim phrase to mean that the lock has freedom to move
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`between the hold and release positions, and is held to the wear member in both of
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`these positions.
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`Alternatively, if the Board does give at least some weight to “reduc[ing] the risk
`
`of dropping the lock during installation,” the Board should construe the entire claim
`
`phrase to mean that the lock has freedom to move between the hold and release
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`positions, and is held to the wear member in both of these positions “such that the
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`lock does not fall out when the wear member is being installed on a base.” Ex. 1002
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`¶ 51. These constructions are consistent with the specification. See, e.g., Ex. 1001 at
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`9:34-40 (“Lock 17 is movable between a hold position (FIGS. 1, 2 and 30) where the
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`lock 17 holds wear member 12 to nose 14, and a release position (FIGS. 31 and 32)
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`Petition for Inter Pa