Paper No. 9
`Trials@uspto.gov
`571.272.7822 Filed: June 18, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`ESCO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015˗00409
`Patent 8,689,472 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, SCOTT A. DANIELS, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`INTRODUCTION
`I.
`Petitioner (Caterpillar, Incorporated) filed a Petition (Paper 2, “Pet.”)
`to institute an inter partes review of claims 1–20 of U.S. Patent No.
`8,689,472 B2 (Ex. 1001, “the ’472 patent”). Patent Owner (ESCO
`Corporation) filed a timely Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 1
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`
`Trials@uspto.gov
`571.272.7822 Filed: June 18, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`ESCO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015˗00409
`Patent 8,689,472 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, SCOTT A. DANIELS, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`INTRODUCTION
`I.
`Petitioner (Caterpillar, Incorporated) filed a Petition (Paper 2, “Pet.”)
`to institute an inter partes review of claims 1–20 of U.S. Patent No.
`8,689,472 B2 (Ex. 1001, “the ’472 patent”). Patent Owner (ESCO
`Corporation) filed a timely Preliminary Response (Paper 7, “Prelim. Resp.”).
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 1
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`IPR2015-00409
`Patent 8,689,472 B2
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`After considering the record to this point in the proceeding, we determine
`that Petitioner has demonstrated a reasonable likelihood of prevailing with
`respect to at least one of the claims challenged in the Petition. We institute
`an inter partes review of claim 14 of the ’472 patent, but deny review of
`claims 1–13 and 15–20. See 35 U.S.C. § 314.
`
`
`A.
`
`BACKGROUND
`
`II.
`Related Proceedings
`Patent Owner asserted the ’472 patent in ESCO Corporation v.
`Cashman Equipment Company, et al., Civil Action No. 2:14-cv-00529,
`United States District Court, District of Nevada, which was consolidated
`with ESCO Corporation v.Cashman Equipment Company, et al., Civil
`Action No. 2:12-cv-01545,United States District Court, District of Nevada,
`on December 30, 2014 (the “Nevada Civil Action”). Pet. 2; Paper 4, 2.
`B.
`The Asserted Grounds and Prior Art
`Petitioner presents the following grounds of unpatentability:
`References
`Basis
`Claims challenged
`Emrich1
`§ 102(b)
`14–20
`
`Emrich
`
`Emrich and Pippins2
`
`§ 103(a)
`
`§ 103(a)
`
`1–20
`
`1–20
`
`
`
`
`
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`1 U.S. Patent No. 5,666,748 (iss. Sept. 16, 1997) (Ex. 1003).
`2 U.S. Patent No. 6,119,378 (iss. Sept. 19, 2000) (Ex. 1004).
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`C.
`
`The ’472 Patent (Ex. 1001)
`The ’472 patent issued from an application that was a continuation of
`Application No. 13/369,699, now abandoned, which is a division of
`Application No. 13/005,791, now U.S. Patent No. 8,122,621 B2 (Ex. 3000,
`the “’621 patent”), which is a divisional of Application No. 11/729,502, now
`U.S. Patent No. 7,882,649 B2 (Ex. 3001, the “’649 patent”), which was
`based on Provisional Application No. 60/787,268, filed March 30, 2006. Ex.
`1001, 1, 1:3–10.
`Consequently, we consider the disclosure of the ’621 and’649 patents
`when construing terms in the ’409 patent. See NTP, Inc. v. Research in
`Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (When construing claims
`in patents that derive from the same parent application and share common
`terms, “we must interpret the claims consistently across all asserted
`patents”); see also Belden Inc. v. Berk-Tek LLC, 2014-1676, 2014-1677,
`2015 WL 1781484, at *3 (Fed. Cir. April 17, 2015) (approving of the
`Board’s claim construction that referred to a parent and grandparent
`application).
`The ’472 patent relates to wear assemblies for securing a wear
`member to excavating equipment. Ex. 1001, 1:14–15. Wear members may
`include excavating teeth or shrouds, and are attached to excavating
`equipment, such as excavating buckets or cutterheads, to protect the
`equipment from wear and to enhance the digging operation. Id. at 1:19–22.
`Such wear assemblies typically include a base, a wear member, and a lock to
`releasably hold the wear member to the base. Id. at 1:23–24.
`
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`Figures 2 and 3 of the ’472 patent are shown below:
`
`
`
`Figure 2 (shown above) is a sideview of the wear assembly, and Figure 3
`(shown above) is a cross-sectional view of the wear assembly veritcally
`along the longitudinal axis. Ex. 1001, 3:34–35.
`
`The ’472 patent describes an embodiment of wear assembly 10 having
`lock 17 for releasably securing wear member 12 onto nose 14 of base 15 that
`is fixed to excavation equipment (e.g., a bucket, not shown). Ex. 1001,
`4:28–30, 39–42, 50–52; Figs. 1–3. In one embodiment, lock 17 fits into
`through-hole 81 in wear member 12. Id. at 9:34–35; Figs. 1, 2. Lock 17 can
`pivot between a hold position and a release position. Id. at 9:36–40, 60–65.
`In the hold position, lock 17 fits within cavity 83 defined in one side of nose
`14, and thereby holds wear member 12 to nose 14 of base 15. Id. at 9:34–
`36, 10:23–27; Fig. 30. In the release position, lock 17 is pivoted out of
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`cavity 83, and wear member 12 can be installed on or removed from nose
`14. Id. at 9:36–40. Figures 30 and 32 of the ’472 patent are shown below:
`
`
`
`
`Figures 30 (above left) and 32 (above right) are transverse cross-sectional
`views of the wear assembly in the hold and release positions, respectively.
`Id. at 4:4–6, 11–12.
`
`D.
`
`Claim Construction
`Of the challenged claims, claims 1, 14, 15, and 18 are independent.
`Claim 1 is illustrative and is reproduced below with line breaks and
`paragraphing added to make the claim easier to read:
`1.
`A wear assembly for excavating equipment comprising a
`wear member having
`a cavity for receiving a base on the excavating equipment
`and a lock opening, and
`a lock secured to the wear member in the lock opening
`for adjustment between a pre-established hold position where
`the lock holds the wear member to the base received into the
`cavity and a pre-established release position where the wear
`member can be installed on the base,
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`the lock being secured to the wear member in both the
`pre-established hold position and the pre-established release
`position irrespective of the insertion of a base in the cavity.
`The Board interprets claims using the broadest reasonable
`construction. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); see also In re Cuozzo Speed
`Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015) (“We conclude that
`Congress implicitly adopted the broadest reasonable interpretation standard
`in enacting the AIA.”).
`For the purposes of this Decision, and on this record, we determine
`that no claim term needs express interpretation apart from those addressed
`below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (only those terms which are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy).
`1. Cavity (claims 1–14)
`Independent claims 1 and 14 are each directed to a wear assembly for
`
`excavating equipment that comprises a wear member having a “cavity for
`receiving a base on the excavating equipment.” Petitioner asserts that
`“cavity” should be construed to mean “a hollow space.” Pet. 16. Patent
`Owner argues that no person of ordinary skill in the art would interpret an
`open area adjacent a shallowly curved surface of an object, such as mounting
`surface 16 of Emrich’s wear cap 10, as corresponding to a cavity as claimed.
`Prelim. Resp. 24–25 (generally disagreeing with Petitioner’s claim
`construction), id. at 28–29 (addressing claim 1 and incorporating Pet. 7–8);
`id. at 51–52 (applying the same arguments to claim 14). Patent Owner
`makes two contentions in support of this argument.
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`First, Patent Owner contends that Emrich does not use the term
`“cavity” to refer to mounting surface 16, and similarly that the ’472 patent
`does not refer to a space such as disclosed by Emrich as a “cavity.” Prelim.
`Resp. 29. This contention is unpersuasive because nomenclature is not the
`proper inquiry. See generally In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`1990) (“These elements must be arranged as in the claim under review, . . .
`but this is not an ‘ipsissimis verbis’ test”) (internal citation omitted,
`emphasis added); In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
`(Although a reference must disclose each and every limitation in a claim to
`anticipate the claim, the reference need not satisfy an ipsissimis verbis test.).
`Second, Patent Owner contends that, “‘cavity’ refers in this art to a
`space that is deep relative to other dimensions of the space and an adjacent
`part.” Prelim. Resp. 29–31 (citing examples in the art). According to Patent
`Owner, the space identified in Emrich is a “depression” or “recess,” not a
`“cavity.” Id. at 29–31. We address these contentions by construing claims 1
`and 14.
`The specification of the ’472 patent does not provide a lexico-
`graphical definition of the claim term “cavity.”3 An ordinary meaning of
`“cavity” is “a hollow place.” 4
`The specification refers to the space within the wear member that
`receives the base as a “socket” or a “cavity.”5 Ex. 1001, 1:49–53; 2:7–14,
`
`3 Nor does the ’621 patent or the ’649 patent provide a lexicographical
`definition. Exs. 3000, 3001.
`4 See WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed.
`1983) (“cavity,” n., def. 1) (Ex. 3002, 3). We discern little difference
`between this definition and that proffered by Petitioner (i.e., “hollow
`space”). See Pet. 16. We utilize a dictionary so that there is a source for the
`meaning.
`
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`41–42, 58–61; 4:28–42; 7:57–61; Fig. 3. The specification describes an
`embodiment having lock 17 that fits within “pocket” or “cavity” 83 defined
`in one side of nose 14. Id. at 3:8–12; 9:34–36; 10:23–27; 11:33–35; Fig. 4.
`Thus, the ’472 patent uses the terms pocket, cavity, and socket
`interchangeably.
`Assuming, for sake of argument, that Patent Owner is correct that
`“cavity” may be understood in the art to mean, “a space that is deep relative
`to other dimensions of the space and an adjacent part” (Prelim. Resp. 29),
`we are not persuaded that a person of ordinary skill would attribute that
`meaning to the ’472 patent because the ’472 patent equates a cavity to a
`pocket or a socket.
`In view of these disclosures, the specification of the ’472 patent is
`consistent with the ordinary meaning that a cavity is a hollow place. See In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (Under the
`broadest reasonable interpretation, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure).
`2. Lock Related Limitations
`
`In construing the independent claims, it is important to distinguish the
`relationship between the lock and the wear member from the relationship
`between the wear member and the base of the excavating equipment.
`Regarding the lock and the wear member, claims 1 and 14 require the lock to
`be “secured” to the wear member, claim 15 requires the lock to be
`
`5 Further illustrating the interchangeability of these terms, claim 1 of the
`’621 patent and claim 1 of the ’649 patent each refer to the opening for
`receiving a base as a “socket,” and claim 1 of ’472 refers to this opening as a
`“cavity.”
`
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`“releasably securable” to the wear member, and claim 18 requires the lock to
`be “coupled together and maintained as a single integral component” with
`the wear member.
`Regarding the relationship between the wear member and the base,
`the independent claims are similar in that each requires the lock to be
`capable of a hold position (holding the wear member to the base) and a
`release position (permitting the wear member to be installed on the base).
`However, as detailed below, the claims differ in scope with regard to
`whether the base of the excavating equipment is inserted in the cavity of the
`wear member when the lock is in the hold and the release positions.
`a. Claim 1
`Independent claim 1 requires that the lock is “secured” to the wear
`member in the lock opening in both the hold and release positions,
`irrespective of insertion of a base in the cavity of the wear member. The
`consequence of these requirements is that the lock must be “secured” to the
`wear member in each of four positions, namely: 6
`(1) release-inserted — the lock is in the pre-established release
`position and the base is inserted in the wear member’s cavity;
`(2) release-non-inserted — the lock is in the pre-established
`release position and the base is not inserted in the wear
`member’s cavity;
`(3) hold-inserted — the lock is in the pre-established hold
`position and the base is inserted in the wear member’s cavity,
`and
`
`
`6 These terms for the four lock positions (e.g., release-inserted) are not
`explicit in the claim or the specification. The parties relied upon these
`terms, and we do so as well to facilitate our analysis.
`
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`(4) hold-non-inserted — the lock is in the pre-established hold
`position and the base is not inserted in the wear member’s
`cavity.
`The specification does not provide a lexicographical definition of
`“secured.” An ordinary meaning of “secure” is “not likely to fail or give
`way . . . as, make the knot secure.”7 The specification provides the example
`that an element may be “secured” by welding or bonding. Ex. 1001, 4:48–
`50; 10:9–11. The specification also describes that lock 17 fits into cavity 83
`“to secure” wear member 12 to base 15, and in such position member 12 is
`“securely held” to base 15.8 Id. at 10:26–27, 42–45; 11:3–5, 11–12.
`Consequently, the specification is consistent with the ordinary meaning that
`“secured” means “unlikely to give way.” See Translogic, 504 F.3d at 1257.
`Consequently, claim 1 requires that the lock is unlikely to give way
`from the wear member irrespective of insertion of the base into the cavity,
`and in both the hold and release positions (i.e., in each of the four positions
`enumerated above).
`
`b. Claim 149
`Claim 14 recites “a lock secured to the wear member in the lock
`opening irrespective of the insertion of a base in the cavity to define a single
`integral component with the wear member.” That is, the lock is secured to
`
`
`7 WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed. 1983)
`(“secure,” a., def. 4) (Ex. 3002, 4).
`8 We note that in this context “to secure” and “securely” refer to how the
`wear member is associated with the base rather than the association between
`the lock and the wear member. The disclosure still sheds light on how a
`person of ordinary skill in the art would interpret the similar terms “secure”
`and “securely.”
`9 Note that “a lock integrally secured” was changed to “a lock secured.”
`Certificate of Correction for the ’472 patent (dated Sept. 23, 2014).
`
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`the wear member (unlikely to give way from the wear member) and defines
`a single integral component with the wear member both when the base is
`inserted in the cavity and when the base is not inserted in the cavity.
`Although claim 14 requires that the lock is moveable between the hold and
`release positions, claim 14 does not recite that the lock is secured to the wear
`member and defines a single integral component in both the hold and the
`release positions. In parity with the claim language, the specification
`describes that the lock is maintained within the lock opening irrespective of
`the insertion of the nose into the cavity, and does not describe that this must
`be true in both the hold and release positions. See Ex. 1001, 2:56–61.
`Claim 14 requires that the lock is secured to the wear member
`(unlikely to give way from the wear member) and defines a single integral
`component with the wear member both when the base is inserted in the
`cavity and when the base is not inserted in the cavity. Claim 14 does not
`require that this is also true in both the hold and release positions.
`c. Claim 15
`
`In contrast to claims 1 and 14, the lock of claim 15 is “releasably
`securable,” rather than “secured,” in the lock opening in the wear member in
`both the hold and release positions. Thus, the lock must be capable of being
`configured such that: (1) it is unlikely to give way from the wear member
`and (2) it may be released from the wear member. Both configurations must
`be possible in both the hold and release positions.
`
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`Consistent with this interpretation, the specification describes wear
`member 12 as “releasably secured” to nose 14 of base 15 by lock 17. 10 Id.
`at 4:48–52. As noted above, lock 17 can pivot between a hold position and a
`release position (permitting wear member 12 to be installed or removed from
`base 14). Id. at 9:36–40, 60–65.
`Claim 15 also recites that the lock is releasably securable in the
`opening in the wear member in both the hold and release positions, “to
`reduce the risk of dropping the lock during installation.” Petitioner contends
`that this language should be given no weight. Pet. 18. Even if this phrase is
`given no weight, claim 15 still requires the lock to be releasably securable to
`the wear member (positionable so that it is unlikely to give way from the
`wear member and so that it is released from the wear member) in both the
`hold and release positions.
`
`
`d. Claim 18
`Rather than “secured” or “releasably securable,” independent claim 18
`requires that the wear member and lock are “coupled together and
`maintained as a single integral component through installation and use.”
`The specification does not provide a lexicographical definition of
`“through,” and an ordinary meaning of “through” is “from the beginning to
`the end.”11 This ordinary meaning suggests that claim 18 requires the lock
`
`
`10 Here, the specification’s use of the term “releasably securable” refers to
`the relationship between the wear member and the base instead of the
`relationship between the lock and the wear member. This use of the term
`still sheds light on how a person of ordinary skill in the art would interpret
`“releasably securable.”
`11 WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed.
`1983) (“through,” adv., def. 2) (Ex. 3002, 3).
`
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`and wear member to be a single integral component from the beginning to
`the end of installation.
`This meaning is consistent with the specification, which describes that
`the lock and wear member can be maintained as a single integral component
`through installation and use. Ex. 1001, 3:1–5; see also Translogic, 504 F.3d
`at 1257.
`
`A.
`
`
`III. PRELIMINARY ISSUES
`Real Parties in Interest
`Petitioner identifies itself as the sole real party in interest. Pet. 2.
`Patent Owner contends that the Petition is procedurally defective in that it
`fails to name all real parties in interest because Raptor and Caterpillar
`Global Mining, Incorporated (“CGM”) were not named. Prelim. Resp. 1.
`Raptor and CGM are co-defendants with Petitioner in the Nevada Civil
`Action. See Ex. 2005, 2.
`Patent Owner contends that the relationship between CGM and
`Petitioner is a “substantive legal relationship” as described in Taylor.
`Prelim. Resp. 21 (quoting Taylor v. Sturgell, 553 U.S. 880 (2008)). As
`Patent Owner acknowledged, CGM is a wholly owned subsidiary of
`Petitioner, not vice versa. See id. Such relationship may suggest that
`Petitioner controls CGM but does not suggest that CGM controls Petitioner.
`This is not the type of substantive legal relationship discussed in Taylor.
`Taylor, 553 U.S. at 894.
`Patent Owner argues that Raptor is a real party in interest because
`Raptor shares a common question of law or fact in the Nevada Civil Action,
`which is “a hornbook situation for application of res judicata.” Prelim.
`
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`Resp. 20 (citing Ex. 2011, 3–8). Indeed, Raptor asserted there was a
`common question of law or fact with Petitioner when Raptor sought to
`intervene in the Nevada Civil Action. See Ex. 2011, 3–4. However, Raptor
`sought to intervene based on the belief that Petitioner could not adequately
`represent Raptor’s interests. That Raptor believed that its interests were not
`adequately represented by Petitioner in the district court suggests Raptor and
`Petitioner are not so closely linked to justify a finding that Raptor is a real
`party in interest here. See Taylor, 553 U.S. at 894–95.
`Patent Owner does not contend persuasively that Raptor or CGM
`controls, directs, or funds Petitioner’s participation in the Nevada Civil
`Action or the Petition at hand. See generally Zoll Lifecor Corp. v. Philips
`Elec. N. Am. Corp., IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`(Paper 15) (the evidence as a whole must show that the non-party possessed
`effective control over the petitioner from a practical standpoint). At most,
`Patent Owner has shown that Raptor and CGM are joint defendants with
`Petitioner in a patent infringement suit, and that is not enough to
`demonstrate that Raptor and CGM are real parties in interest. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14,
`2012) (A party also is not considered a real party in interest in an inter
`partes review solely because it is a joint defendant with a petitioner in a
`patent infringement suit or is part of a joint defense group with a petitioner
`in the suit); see generally Denso Corp. v. Beacon Navigation GmbH,
`IPR2013-00026, slip op. at 10–11 (PTAB Mar. 14, 2014) (Paper 34).
`From the record to this point in the proceeding, it appears that
`Petitioner need not have identified Raptor and CGM as real parties in
`
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`interest, and therefore consideration of the Petition is not prohibited by 35
`U.S.C. § 312(a)(2).
`
`Exclusion of Petitioner’s Expert Declaration
`B.
`The Petition is supported by the Declaration of Mr. Lee A. Horton,
`
`P.E. (Ex. 1002). Patent Owner contends that the Horton Declaration should
`be excluded. Prelim. Resp. 26–28 (citing Numatics, Inc. v. Balluff, Inc.
`2013-11049, 2014 WL 7211167, at *3–7 (E.D. Mich. Dec. 16, 2014)).
`To begin, we note that in Numatics, counsel went beyond providing
`
`assistance to the expert and prepared the expert’s report in its entirety.
`Numatics, 2014 WL 7211167, at *3–7. Here, Patent Owner alleges a
`“striking similarity” between the Petition and the Horton Declaration. See
`Prelim. Resp. 27. Such contention falls short of demonstrating persuasively
`that the Horton Declaration was prepared by Petitioner’s counsel without
`meaningful substantive involvement by Mr. Horton.
`
`We need not further address the issue at this time. Patent Owner’s
`contention is in the Preliminary Response, and is not in the form of a motion
`to exclude the Horton Declaration. We note, however, that an objection to
`evidence submitted during a preliminary proceeding, such as the Horton
`Declaration, must be served within ten business days of institution of trial.12
`37 C.F.R. § 42.64(b)(1). The party relying upon the evidence, in this case
`Petitioner, would then have an opportunity to serve supplemental evidence.
`37 C.F.R. § 42.64(b)(2). As such, a motion to exclude is premature at this
`point.
`Accordingly, we do not exclude the Horton Declaration.
`
`12 This Decision institutes trial.
`
`
`
`15
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 15
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`IPR2015-00409
`Patent 8,689,472 B2
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`
`IV. ANALYSIS13
`Obviousness over Emrich — Claims 1–13
`A.
`Petitioner contends that claims 1–13 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Emrich. Pet. 19–57. Petitioner contends that
`Emrich discloses a wear member (wear cap 10) having lock (lock 40) in a
`lock opening (opening 90). 14 Id. at 21. Figures 18 and 16, as annotated by
`Petitioner, are shown below:
`
`
`
`Emrich’s Figures 18 and 16 (shown above) are cross sectional views
`illustrating different orientations of lock 40, and have been annotated by
`Petitioner in support of the contention that Emrich discloses pre-established
`hold and release positions (Figures 18 and 16, respectively). Pet. 22; Ex.
`1003, 2:59–61.
`As in our interpretation of claim 1 above, Petitioner interprets claim 1
`to require four configurations related to the lock. Pet. 23. Petitioner
`contends that Emrich discloses the first three positions. Id. at 23–26. With
`regard to the hold-non-inserted position (position 4), Petitioner contends that
`
`
`13 Our analysis addresses the grounds of unpatentability in an order that
`differs from Petitioner’s. See Pet. 4 (numbering the grounds of
`unpatentability).
`14 Parenthetical nomenclature is Emrich’s.
`
`
`
`16
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 16
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`IPR2015-00409
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`
`when lock 40 is inserted into wear cap 10, Emrich does not explicitly state
`that lock 40 is “secured” to wear cap 10. Id. at 26. This position is like that
`of Figure 18 above, except that adapter 28 (base) would not be inserted in
`the wear cap 10 (wear member).15
`Petitioner contends that it would have been obvious to design
`elastomers 82 of Emrich’s resilient latches 78 to have the composition and
`size to force tips 84 into rails 96 when lock 40 is in the hold-non-inserted
`position. Pet. 27. According to Petitioner, the force exerted by latches 78
`and the opposing force on wear cap 10 would secure the lock 40. Id. at 28–
`29 (citing Ex. 1002 ¶¶ 64–66). Patent Owner does not contest that lock 40
`would be secured by such modification; rather, Patent Owner attacks
`Petitioner’s rationale for the modification.
`Before addressing Petitioner’s rationale, we note that Petitioner states
`that Emrich discloses that “[t]he engagement of latches [78] against rails 96
`functions to releasably retain hub 64 in its locked position.” Pet. 27
`(quoting Ex. 1003, 6:23–24 and adding emphasis). To the extent that this
`can be seen as a contention that Emrich discloses a lock that is secured to the
`wear member when the lock is in a hold position and the base is not inserted
`in the cavity of the wear member, we disagree. In context, Emrich is
`referring to lock 40 remaining in the locked position (hold-inserted) as
`opposed to the release position (release-inserted), meaning that latches 78
`prevent rotation of lock 40. Petitioner also mentions that Emrich discloses
`an alternative embodiment wherein latches 78 may “engage a keeper . . . ,
`such as a groove, to retain the lock in the locked position.” Id. at 30
`(quoting Ex. 1003, 6:10–12). In context, this disclosure is also referring to
`
`15 Allegedly corresponding claim elements in parentheses.
`
`
`
`17
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 17
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`IPR2015-00409
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`lock 40 remaining in the locked position (hold-inserted) as opposed to the
`release position (release-inserted), meaning that latches 78 prevent rotation
`of lock 40. Neither disclosure supports adequately a finding that lock 40 is
`secured to wear cap 10 when the base (wear cap 10) is not inserted.
`Turning to the proffered rationale, Petitioner asserts that such
`modification of Emrich would have been a common-sense implementation.
`Pet. 26. Petitioner provides several contentions in support of this assertion.
`First, Petitioner contends that an ordinary artisan would have modified
`Emrich’s latches 78 because construction tools were subject to impact and
`high forces, which can jostle, wear, and loosen a lock. Pet. 29 (citing Ex.
`1002 ¶ 66; Ex. 1005 ¶¶ 4, 6, 10). The hold-non-inserted position is a
`position that is only used by Emrich when its wear cap 10 is not installed on
`its adapter 28. See Prelim. Resp. 36–38. Therefore, in the hold-non-inserted
`position, the lock and wear cap are not exposed to the impact and forces of
`the excavation equipment, and Petitioner’s reasoning lacks a rational
`underpinning.
`Second, Petitioner contends that modified latches 78 would help lock
`40 maintain a snug fit and reduce wear on shaft 76. Pet. 29–30 (citing Ex.
`1002 ¶ 66). Petitioner does not explain cogently how unmodified latches 78
`would be subject to wear, or how modifying latches 78 would decrease
`wear. Mr. Horton’s testimony, which essentially repeats the argument in the
`Petition , adds no meaningful support to Petitioner’s argument. See 37
`C.F.R. § 42.65(a) (expert testimony that does not disclose underlying facts
`or data is entitled to little or no weight).
`Third, Petitioner contends that a person of ordinary skill in the art
`would have modified Emrich’s latches 78 to account for manufacturing
`
`
`
`18
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 18
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`IPR2015-00409
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`variations because elastomers 82 of Emrich’s latches 78 could accommodate
`variance while still engaging rails 96. Pet. 30 (citing Ex. 1002 ¶ 67).
`Petitioner neither cites Emrich nor provides other supporting evidence,
`indicating that manufacturing variations were a problem in Emrich’s device.
`The cited portion of the Horton Declaration is essentially a copy of what is
`stated in the Petition, and no underlying facts or data are provided. Further,
`Petitioner does not explain persuasively why a person of ordinary skill in the
`art would have modified Emrich’s latches to compensate for manufacturing
`variations when any number of other modifications to Emrich might address
`the same issue.
`Fourth, Petitioner contends that the modification would prevent
`common shipping problems and provide a second shipping configuration as
`an alternative to positioning lock 40 in the release-non-inserted position.
`Pet. 31–32. Patent Owner points out, and we agree, that Emrich’s release-
`non-inserted position provided a shipping position. Prelim. Resp. 36–37.
`Petitioner does not explain persuasively why a person of ordinary skill in the
`art would have been motivated to create a second shipping configuration.
`For these reasons, Petitioner has not provided an adequate rationale
`for modifying Emrich’s latches. Accordingly, on the record before us,
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`establishing that claims 1–1316 are unpatentable under 35 U.S.C. § 103(a) in
`view of Emrich.
`
`
`
`16 Claims 2–13 depend from independent claim 1.
`
`
`
`19
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`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2027 Page 19
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`IPR2015-00409
`Patent 8,689,472 B2
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`B.
`
`Anticipation by Emrich or Obviousness over Emrich — Claims 14–20
`Petitioner contends that claims 14–20 are unpatentable as anticipated
`by Emrich, and alternatively would have been obvious over Emrich.
`Pet. 41–57.
`1. Claim 14
`Petitioner explains how each limitation is disclosed by Emrich. Pet.
`41–47. Patent Owner makes two arguments that claim 14 is not anticipated
`by Emrich: one, that Emrich does not disclose a lock having a fourth
`configuration (the hold-non-inserted position), and two that Emrich does not
`disclose a cavity. Prelim. Resp. 51–52. For th
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