UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`ESCO CORPORATION,
`Owner.
`
`Case IPR2015-01032
`Patent 8,689,472 B2
`
`Related Prior Case IPR2015-00409
`Same Patent, Same Claims
`____________
`
`
`
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE
`
`TO THE PETITION FOR INTER PARTES REVIEW
`
`IN THIS SECOND CASE
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 1
`
`

`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 3
`A.
`The parties include the patent owner, petitioner, and several
`other real parties. ................................................................................... 3
`1. The patent owner is ESCO Corporation of Oregon. ......................... 3
`2. The petitioner is Caterpillar, Inc. ...................................................... 3
`3. There are several other unnamed real parties. ................................... 4
`Carpenter ’472 ....................................................................................... 4
`1. Related pending cases ....................................................................... 4
`2. The underlying technology requires focused inventiveness. ............ 4
`a) Wear assembly design presents several unique and
`intertwined challenges. .......................................................... 4
`b) Lock design presents its own specific challenges. ................. 8
`c) Locks have commonly been “hammer-driven.” .................... 9
`d) There are several challenges with hammerless lock
`design. .................................................................................. 10
`e) Carpenter ’472 overcomes these hammerless lock
`design challenges. ................................................................ 11
`f) Other forms of locks are non-analogous. ............................ 13
`g) The POSITA must have experience in designing
`GETs. ................................................................................... 13
`STATEMENT IDENTIFYING MATERIAL FACTS IN DISPUTE ........... 14
`III.
`IV. THE PETITION SHOULD BE DENIED ON PROCEDURAL
`GROUNDS .................................................................................................... 14
`A.
`The petition should be denied because it raises substantially the
`same arguments that were previously presented in the ’409
`petition. ................................................................................................ 14
`The Board should decline Institution in the interests of fairness,
`economy, and efficiency. .................................................................... 17
`The petition fails to identify all real parties in interest. ...................... 21
`The petition is a waste of this tribunal’s resources. ............................ 26
`
`B.
`
`C.
`D.
`
`
`
`ii
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 2
`
`

`
`V.
`
`THE PETITION SHOULD BE DENIED ON THE MERITS ...................... 26
`A.
`Claim construction .............................................................................. 27
`B.
`Petitioner’s “expert” declaration should be excluded. ........................ 29
`C.
`Claims 1-13 are Patentable (Ground 2). .............................................. 31
`1. Petitioner concedes that Gale fails to disclose a lock secured
`to the wear member. ........................................................................ 31
`2. Petitioner fails even in its more basic assertions about Gale. ......... 32
`3. A POSITA would be motivated by Peterson against
`combining Peterson with Gale. ....................................................... 40
`4. A POSITA would not discern any suggestion to modify Gale. ...... 42
`5. Petitioner’s proposed modifications lack common sense. .............. 43
`6. Gale teaches away from the claimed inventions. ............................ 51
`7. Petitioner’s failure of prior art proves the invention. ...................... 51
`8. Returning to Petitioner’s concession, there is no showing of
`obviousness because of the concession ........................................... 52
`Claims 14-20 are Patentable (Grounds 1 and 2). ................................ 55
`1. Ground 1 fails: Petitioner’s proposed constructions are
`unreasonable. ................................................................................... 55
`2. Ground 2 fails for reasons already given for claims 1-13. .............. 59
`VI. CONCLUSION: REVIEW SHOULD BE DENIED .................................... 59
`
`
`
`D.
`
`
`
`iii
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 3
`
`

`
`Cases
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Comms., Inc.,
`694 F.3d 1312 (2012)......................................................................................... 29
`
`Advanced Display Sys., Inc. v. Kent State University,
`212 F.3d 1272 (2000)......................................................................................... 52
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards,
`IPR2013-00453, Paper 88, at 11-13 (Jan. 6, 2015) ........................................... 25
`
`BioDelivery Sciences Int’l, Inc. v. RB Pharm. Ltd.,
`IPR2014-00998, (P.T.A.B. Dec. 19, 2014) ....................................................... 19
`
`Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324 (P.T.A.B. Nov. 21, 2013) ................................................ 15, 16
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581 (P.T.A.B. Oct. 14, 2014) ......................................................... 14
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00628 (P.T.A.B. Oct. 20, 2014) ............................................ 14, 17, 19
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (1999) ........................................................................................... 54
`
`Ex Parte Masham,
`2 U.S.P.Q.2d 1647 (B.P.A.I. Feb. 26, 1987) .............................................. 56, 57
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................................... 54
`
`Grain Processing Corp. v. American Maize Products,
`840 F.2d 902 (1988) ........................................................................................... 54
`
`Heckler v. Chaney,
`470 U.S. 821 (1985) ........................................................................................... 19
`
`In re Gal,
`980 F.2d 717 (1992) ........................................................................................... 55
`iv
`
`
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 4
`
`

`
`In re Kahn,
`441 F.3d 977 (2006) ........................................................................................... 55
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ......................................................................... 28
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324 (P.T.A.B. Nov. 21, 2013) ................................................ 15, 16
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................... 54, 55
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2013-00009, Paper 10 ............................................................................... 21
`
`MCI Telecom. Corp. v. AT&T Co.,
`512 U.S. 218 (1994) ........................................................................................... 44
`
`Medtronic v. Norred,
`IPR2014-00395, Paper 4 .................................................................................... 21
`
`Microsoft Corp. v. Proxyconn, Inc.,
` - F.3d - , 2015 WL 3747257, (Fed. Cir. June 16, 2015) ............................ 27, 28
`
`Numatics, Inc. v. Balluff, Inc.,
`Case No. 13-11049, 2014 WL 7211167 (Dec. 16, 2014) .................................. 31
`
`Plas-Pak Industries v. Sulzer Mixpac AG,
`No. 2-14-1447, slip op. (January 27, 2015) ....................................................... 50
`
`Samsung v. Rembrandt,
`IPR2015-00114 (P.T.A.B. Jan. 28, 2015) ......................................................... 20
`
`SAS Institute, Inc. v. Complementsoft, LLC,
`IPR2013-00581 (P.T.A.B. Dec. 30, 2013) ........................................................ 17
`
`Standard Innovation Corp. v. Lelo, Inc.
`IPR2014-00907 (P.T.A.B. Dec. 1, 2014) .......................................................... 17
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .................................................................................... 22, 24
`
`
`
`v
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 5
`
`

`
`Unilever, Inc. v. Proctor & Gamble Co.,
`IPR2014-00506, (P.T.A.B. July 7, 2014) ................................................... 14, 18
`
`Statutes
`
`35 U.S.C. § 312 ................................................................................................... 2, 21
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ................................................................................................... 1, 19
`
`35 U.S.C. § 325 ....................................................................... 1, 2, 14, 16, 18, 19, 21
`
`Other Authorities
`
`MPEP 2141 .............................................................................................................. 51
`
`MPEP 2143 ................................................................................................. 44, 50, 54
`
`MPEP 2145 .............................................................................................................. 51
`
`Office Trial Practice Guide,
`77 Fed.Reg. 48,756 (2012) ........................................................................... 3, 22
`
`Rules
`
`37 C.F.R. § 42.104 ............................................................................................ 53, 59
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108 ..................................................................................................... 1
`
`37 C.F.R. § 42.23 ..................................................................................................... 14
`
`37 C.F.R. § 42.64 ..................................................................................................... 29
`
`37 C.F.R. § 42.65 ..................................................................................................... 29
`
`District of Nevada Local Rule of Court
`LR 16.1-14.......................................................................................................... 29
`
`Fed. R. Evid. 401 ..................................................................................................... 29
`
`
`
`vi
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 6
`
`

`
`Fed. R. Evid. 403 ..................................................................................................... 29
`
`Fed. R. Evid. 408 ..................................................................................................... 29
`
`Fed. R. Evid. 702 ..................................................................................................... 31
`
`vii
`
`
`
`
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 7
`
`

`
`Exhibit 2001
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`Exhibit 2005
`
`Exhibit 2006
`Exhibit 2007
`
`Exhibit 2008
`Exhibit 2009
`Exhibit 2010
`Exhibit 2011
`
`Exhibit 2012
`
`Exhibit 2013
`Exhibit 2014
`Exhibit 2015
`
`LIST OF EXHIBITS
`
`ESCO product catalog publication (2009)
`
`ESCO Ultralok® Construction Tooth System catalog publica-
`tion (2012)
`
`ESCO Ultralok® Mining Tooth System catalog publication
`(2012)
`
`ESCO Ultralok® Installation and Removal publication (2009)
`
`Consolidated Complaint, ESCO Corp. et al. v. Caterpillar, Inc.
`et al., Case No. 2:12-cv-01545-RCJ-NJK (D. Nev. 2012) (with-
`out exhibits)
`
`U.S. Patent No. 7,762,015 (assigned to Caterpillar, Inc.)
`
`U.S. Patent No. 5,561,925 (“Livesay”) (assigned to Caterpillar,
`Inc.)
`
`U.S. Patent No. 7,640,685 (inventor Emrich)
`
`Reserved
`
`Reserved
`
`Raptor’s Motion to Intervene, Case No. 1:12-cv-01017-JBM-
`JAG (C.D. Ill. 2012)
`
`Caterpillar, Inc.’s Proposed Second Amended Complaint, Case
`No. 1:12-cv-01017-JBM-JAG (C.D. Ill. 2012)
`
`Reserved
`
`Reserved
`
`ASTM Standard D 653-02, Standard Terminology Relating to
`Soil, Rock, and Contained Fluids, May 2002.
`
`Exhibit 2016
`
`U.S. Patent 5,465,512 (“Livesay ’512”) (assigned to Caterpil-
`
`
`
`viii
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 8
`
`

`
`lar)
`
`U.S. Patent 7,174,661 (“Briscoe”) (assigned to ESCO)
`
`U.S. Patent No. 6,430,851 (“Clendenning”)
`
`Prosecution file history of reexamination of U.S. Patent
`7,174,661 at Declaration of Inventor Terry Briscoe
`
`Reserved
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 7,171,771 (“Briscoe ’771”) (assigned to ESCO)
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 5,666,748 (“Emrich,” which is petitioner’s
`primary reference in IPR2015-00409)
`
`Decision, Institution of Inter Partes Review, Paper No. 9 Filed
`June 18, 2015, Case IPR2015-00409
`
`Transcript of Claim Construction Hearing, excerpted, Case No.
`1:12-cv-01017-JBM-JAG (C.D. Ill. 2012)
`
`http://www.miningweekly.com/article/company-
`announcement-caterpillar-increases-commitment-to-mining-
`customers-company-to-produce-full-line-of-mining-shovels-
`and-expand-truck-capacity-2010-06-18
`
`810 ILCS 5/2-312, Illinois Commercial Code
`
`Wisconsin Commercial Code 402.312
`
`https://mining.cat.com/aboutus
`
`Patent owner preliminary response, IPR2015-00409 (without
`
`ix
`
`Exhibit 2017
`Exhibit 2018
`Exhibit 2019
`
`Exhibit 2020
`Exhibit 2021
`Exhibit 2022
`Exhibit 2023
`Exhibit 2024
`Exhibit 2025
`Exhibit 2026
`
`Exhibit 2027
`
`Exhibit 2028
`
`Exhibit 2029
`
`Exhibit 2030
`Exhibit 2031
`Exhibit 2032
`Exhibit 2033
`
`
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 9
`
`

`
`Exhibit 2034
`Exhibit 2035
`
`Exhibit 2036
`
`Exhibit 2037
`
`Exhibit 2038
`
`Exhibit 2039
`Exhibit 2040
`Exhibit 2041
`Exhibit 2042
`Exhibit 2043
`Exhibit 2044
`Exhibit 2045
`
`exhibits).
`
`Reserved
`
`ESCO video available at
`https://www.youtube.com/watch?v=mE-zIKxxoN8
`
`https://www.scribd.com/doc/233099739/0510-Performance-
`Metrics-for-Mining-Equipment-1#scribd, Copyright Caterpillar
`Inc. May 2005
`
`http://www.prnewswire.com/news-releases/caterpillar-inc-and-
`terex-corporation-announce-intent-to-realign-caterpillars-
`mining-shovel-business-and-terexs-mining-truck-business-
`70737922.html (Press release of July 1, 2003, Source: Caterpil-
`lar Inc.)
`
`Letter of Sept. 8, 2014 form John J. Stapleton of Baker
`Hostetler
`to ESCO’s counsel
`for
`the production of
`CAT_ESCO500000001 - CAT_ESCO50000798
`
`Litigation production document CAT_ESCO50000449-480
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`http://www.finnegan.com/interpartesreviewpractice/
`
`http://www.finnegan.com/coveredbusinessmethodpatentspractic
`e/
`
`Exhibit 2046
`
`http://www.raptormining.com/
`
`
`
`x
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 10
`
`

`
`I.
`
`INTRODUCTION
`
`ESCO Corporation submits this preliminary response to the Petition (the “’032
`
`petition”), which requests inter partes review of claims 1-20 of U.S. Patent No.
`
`8,689,472 (“Carpenter ’472”) (Ex. 1001). See 35 U.S.C. §§ 313-314, 37 C.F.R. §§
`
`42.107-108. This is the second petition that petitioner Caterpillar has filed for the
`
`claims of this patent. Caterpillar filed its first petition in Case IPR2015-00409 (the
`
`“’409 petition”). See Ex. 2027 (the “’409 decision”).
`
`This ’032 petition should be denied for several reasons. First, it should be denied
`
`under 35 U.S.C. § 325(d). It presents substantially the same arguments against the
`
`same claims as in the ’409 petition, but uses even less relevant art than was used in
`
`the ‘409 petition. Given that the three grounds and lengthy arguments of the ‘409
`
`petition resulted in only one claim going into trial on only one ground, and given
`
`that lesser references are used here, this ‘032 petition should not result in any
`
`claims going into trial on any grounds. Further, the art relied upon here, Gale and
`
`Peterson, was known and available at the time petitioner filed the ’409 petition. In-
`
`deed, petitioner is the original assignee on the face of Gale, and Peterson is a cited
`
`reference on the face of Carpenter ’472. Petitioner has not provided a cogent rea-
`
`son why the grounds asserted here could not have been asserted in the ’409 peti-
`
`tion; why the grounds asserted here are different or better than those asserted in the
`
`
`
`1
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 11
`
`

`
`’409 petition (they are not); or why a new decision should be made and a new trial
`
`instituted.
`
`Second, the petition should be denied under § 325 (d) discretion because insti-
`
`tuting proceedings here would only encourage petitioner, its counsel, and all peti-
`
`tioners and their counsel to hold back prior art for successive attacks. Petitioner’s
`
`attempted second bite at the IPR apple ties up limited Board resources that others
`
`deserve, burdens the patent owner, and cuts against the just, speedy, and inexpen-
`
`sive resolution of all proceedings.
`
`Third, the petition should be denied under 35 U.S.C. § 312 (a)(2) because it fails
`
`to name all real parties in interest. 1
`
`And finally, the petition should be denied on its merits. Just as the petitioner
`
`failed to prove a case in the ’409 petition on any of three grounds as to any of
`
`claims 1-13 and 15-20, so too has it failed to prove here that it has a reasonable
`
`likelihood that it will prevail as to claims 1-20 on its two grounds. Indeed, the prior
`
`art does not have the content the petitioner asserts it to have; the prior art lacks
`
`claim limitations; the prior art does not teach, suggest or motivate toward petition-
`
`
`
`1 ESCO recognizes that an issue of real party in interest was decided in the ’409
`
`case. Ex. 2027 13-15. The issues are different here, based on new facts.
`
`
`
`2
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 12
`
`

`
`er’s asserted combination; the prior art has principles of operation the petitioner
`
`violates; the prior art teaches and suggests away from the asserted combination;
`
`and the petitioner’s claim interpretations are unreasonable. See Ex. 2027; see also
`
`Office Trial Practice Guide, 48,756, 48,764.
`
`Accordingly, ESCO requests that the Board deny a second review, a second tri-
`
`al, and a second bite at the apple.
`
`II. BACKGROUND
` The parties include the patent owner, petitioner, and several other
`A.
`real parties.
` The patent owner is ESCO Corporation of Oregon.
`1.
`Headquartered in Portland, Oregon, ESCO is a world-wide leader in the design
`
`and manufacture of highly engineered wear-and-replacement products for industri-
`
`al mining. See, e.g., Ex. 2001 2, 28. ESCO commercializes the invention of Car-
`
`penter ’472 in its Ultralok® systems. See, e.g., Exs. 2001-2004. For more infor-
`
`mation, see the patent owner preliminary response in the ’409 petition. Ex. 2033.
`
`2.
`
` The petitioner is Caterpillar, Inc.
`Petitioner makes and sells excavating machines, many including wear and re-
`
`placement products designed, developed, and patented by ESCO. Unfortunately, in
`
`trying to capture more market from ESCO, petitioner and the associated real par-
`
`ties infringe ESCO’s patents.
`
`3
`
`
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 13
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`

`
` There are several other unnamed real parties.
`3.
`To protect its industry-leading innovations, ESCO asserted six patents—
`
`including Carpenter ’472—in litigation (Case No. 2:12-cv-01545-RCJ-NJK (“Liti-
`
`gation”)) against petitioner and four other parties: (1) Caterpillar Global Mining,
`
`Inc.; (2) Raptor USA, Inc.; (3) Raptor Canada, Inc.; and (4) Cashman Equipment
`
`Corporation. See Ex. 2005. In the Litigation, petitioner and the four other parties
`
`are acting in concert, submitting joint filings and sharing experts. At least one (and
`
`potentially three) of those other parties is an unnamed real party in interest. See in-
`
`fra at Section IV.B (“The petition fails to include real parties in interest.”).
`
`B.
`
` Carpenter ’472
` Related pending cases 1.
`
`Pending Application No. 14/213,538 (“’538”) claims Carpenter ’472 and/or its
`
`parent cases. Application Nos. 14/640,999, 14/641,014, 14/641,046, 14/641,059,
`
`and 14/642,540 claim the benefit of ’538. ESCO is asserting Carpenter ’472 and its
`
`parent Patent No. 8,122,621 in the Litigation. See Ex. 2027 2.
`
`2.
`
` The underlying technology requires focused inventiveness.
`a) Wear assembly design presents several unique and inter-
`twined challenges.
`
`Carpenter ’472 relates to wear assemblies for securing wear members to exca-
`
`vating equipment. Ex. 1001 1:14-15; Ex. 2027 3. Wear assemblies and wear parts
`
`
`
`4
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 14
`
`

`
`are also known as ground engaging tools (“GETs”), or, in some configurations,
`
`they are simply called “teeth.” Ex. 1001 1:22; Ex. 2027 3. Wear members in tooth
`
`systems are also called “points.” Id. 1:29-30.
`
`As their name suggests, wear members wear, and need to be replaced with some
`
`frequency, because they are put on the
`
`“front line” of the heavy work of excavat-
`
`ing equipment, bearing the brunt of excava-
`
`tion forces, abrasion, and the like. See, e.g.,
`
`id. 1:35-41. Wear members’ jobs are to
`
`take the wear so that other wear assembly components and the far-more-expensive
`
`excavating equipment do not. Wear as-
`
`semblies generally comprise three parts:
`
`(1) a base fixed to the excavating
`
`equipment, which may be part of the ex-
`
`cavating equipment or may itself be a
`
`replaceable component such as an
`
`“adapter” or “intermediate adapter”; (2)
`
` the wear member; and (3) a lock which
`
`is installed to secure the wear member
`
`
`
`5
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 15
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`

`
`to the base, and adjusted or removed to enable the wear member to be replaced.
`
`See, e.g., id. 1:23-24; Ex. 2027 3.
`
`The image nearby shows an example of “real world” ESCO wear members—a
`
`point and a shroud—mounted on a base which, in turn, is to be mounted onto ex-
`
`cavating equipment. A lock is placed in a recessed pocket to secure the point to the
`
`base. The parts of the wear assembly have lift hooks (or lifting eyes) because, be-
`
`ing made of steel, they are heavy enough to typically require lift equipment to
`
`move them. Ex. 2003 4.
`
`The images nearby show wear members and wear parts “in the field.” See also
`
`Ex. 2003 4. They are new and green, as in the image above. Worn-down wear
`
`members in gray are on either side. The extent of wear on old wear members is
`
`clearly visible: dimensions are shortened, and corners and edges have lost defini-
`
`tion. Note that a lift hook (visible on the new wear member) has been ground off
`
`the worn members. The reason the lock is recessed is now evident: it would other-
`
`wise have been ground away. Note further that gaps and similar surrounding spac-
`
`es—including particularly, the spaces above and around the locks of the worn
`
`teeth—are filled with tiny particles of crushed rock called “fines” (see below).
`
`The depictions below show the dramatic wear of a wear member after it has
`
`worn down and needs replacement, in comparison to a new wear member. Nearly
`
`
`
`6
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 16
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`

`
`half of the wear member body is gone. See Ex. 2035.
`
`
`In short, wear members and the wear parts of which they are components are
`
`commonly subjected to harsh conditions and heavy loading. Ex. 1001 1:35 et seq.
`
`They must “absorb” wear. Ex. 2006 1:33. They are sometimes called “sacrificial,”
`
`in that they are sacrificed to the conditions. Ex. 1004 1:17. Wear assemblies expe-
`
`rience not only exterior loading and wear, but also interior loading and wear. They
`
`suffer loss of material and deformation from contact between mating components,
`
`whether it be one wear component with another or with an excavator support struc-
`
`ture. Internal loading and movement cause peening, galling, fracturing and other
`
`damage. Ex. 2019 ¶ 10.
`
`Thus, in designing wear parts and their wear members, attention is directed to
`
`strength, stability, durability, penetration (in materials being excavated), safety,
`
`and ease of replacement. Ex. 1001 1:37 et seq. Many designs have been developed
`
`
`
`7
`
`Caterpillar v. ESCO IPR2015-01032
`ESCO Exhibit 2050 Page 17
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`

`
`in the past with varying degrees of success. Id.
`
`b) Lock design presents its own specific challenges.
`Wear parts and their wear members must not come off. If they do, they fail one
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`of their essential purposes: taking wear and protecting underlying components.
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`After wear members and wear parts have been used, however, they must come off.
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`If they do not, they fail another essential purpose: being replaceable, so next wear
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`members and parts continue to protect underlying parts. The result is that locks
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`must be non-failing both in securement in use and detachment at the conclusion of
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`use.
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`Locks must also be structured and configured out of the way of wear. The locks
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`cannot be structured or placed such that they wear off (such as the surfaces, cor-
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`ners, edges, lift hooks, etc., of the wear member itself). Locks should also be posi-
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`tioned out of the paths of high-digging loads. These loads create forces that are
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`transferred, in all directions, from the wear members to the bases, and vice versa.
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`See, e.g., Ex. 2007 1:23-28. Left in the paths of heavy forces, the locks may break.
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`Id. Moreover, locks must work throughout their lives while the wear part compo-
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`nents around them wear down and dimensionally change, both externally and in-
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`ternally. They must be structured and placed to work when wear parts are new, and
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`when changed dramatically.
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`Finally, locks must work in the presence of being packed in place by “fines”—
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`tiny particles of crushed rock—that act like cement. Fines have sometimes been
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`defined as finer than a No. 200 sieve (0.075 mm) (about two-hundredths of an
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`inch). See, e.g., Ex. 2015, 12. They infiltrate the wear assembly. They can become
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`cemented between assembly components, causing difficulties in removing locks
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`when it is time to replace the wear member. Emrich, the ’409 primary reference,
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`makes this point clearly: fines compact tightly. Ex. 2026 2:18-19, 26. Indeed, they
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`bring “intergranular bonding” that “compact[s] about the locks.” Id. 5:9-11. Bond-
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`ing strength adds to the burdens of wear member and wear part removal, and must
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`be overcome or its effects minimized. Id. 4:54-61, 6:33-41. Petitioner’s Smith pa-
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`tent also confirms bonding: “Material … causes binding or adhesion.” Ex. 2006
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`1:46-53. See also, e.g., Ex. 2026 1:43-45 (“tightly compacted … soil fines.”).
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`c) Locks have commonly been “hammer-driven.”
`Historically, wear assembly locks have commonly been “hammer-driven.” Spe-
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`cifically, to secure wear members to bases, mining site operators would install
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`locking pins into aligned holes in the wear members and bases by hammering pins
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`into position through the holes. When it is time to replace wear members, the oper-
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`ator then hammers the locking pins out of position to allow the wear members to
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`be removed from the bases. The use of a large hammer for installing and removing
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`9
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`locks has several disadvantages—especially in relation to operator safety. Indeed,
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`when using a sledge hammer, operators risk suffering injuries from strain and from
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`projectile parts or splinters.
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`Looking at the example image below, it’s easy to see why using a hammer
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`would present risks. An operator would swing
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`a 16-30 lb. sledgehammer, sometimes from
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`between his legs to strike hard blows on a
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`lock holding a wear member. The swing is
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`awkward. And it takes as many as 45-120
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`blows to change just one of the many teeth. Ex. 2019 ¶ 21.
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`d) There are several challenges with hammerless lock design.
`Development of locking systems has involved nearly permanent industry chal-
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`lenges. The patent record is littered with now-abandoned, bypassed, and little-used
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`locks. Not so with Carpenter ’472. It teaches a high, if not the highest, industry
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`achievement in hammerless locks in response to these challenges.
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`For example, due to the challenges of hammer-driven locks, wear members have
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`at times been welded to their bases. See, e.g., Ex. 2016 1:12-15. Others bolted on.
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`Id. But burning off welds is time consuming and detrimental to bases, id., 1:40 et
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`seq., and torqueing down bolts often does not provide securement, or provides too
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`much securement so as to prevent easy removal. Id. 1:16 et seq. Clamps and wedg-
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`es fared no better, requiring hammering and suffering loosening or their own prob-
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`lematic welds. Id. Hammered sandwich pins also came into use, but their added re-
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`taining mechanisms—with spring biased detent pins and rubber components—
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`added complexity and were prone to premature failure. Ex. 2007 1:28-34.
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`Preceding the Ultralok system, ESCO created the Torque Wedge™ pin, used in
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`the Posilok® Plus system. See, e.g., Exs. 2017, 2023. The Torque Wedge™ pin
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`was excellent and is still useful. Carpenter ’472 incorporates it at its second em-
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`bodiment, Ex. 1001 11:42 et seq., Figs. 33-37. Yet it requires multiple full rota-
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`tions of the pin; often has an associated spool; and is separate from its wear mem-
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`bers until it is placed in a provided opening, after a wear member is placed on its
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`base, and as soon as it is removed in a first step of removal of the wear member. Id.
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`Other challenges of a hammerless lock design include high magnitude loads,
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`impact, minimizing equipment downtime with quick and easily replaceable wear
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`parts, risk of damage to downstream equipment by lost or broken wear part com-
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`ponents, removal through hand tools, corrosion, and extreme temperatures. See,
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`e.g., Exs. 2001 26; 2008 1:54-58; 2023 1:16-22; 2018 2:47-55; 2019 ¶¶ 9, 11, 19.
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`e) Carpenter ’472 overcomes these hammerless lock design
`challenges.
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`Carpenter ’472 discloses “an improved wear assembly for securing wear mem-
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`11
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`bers to excavating equipment for enhanced stability, strength, durability, penetra-
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`tion, safety, and ease of replacement.” Ex. 1001 1:45-48. Particularly, Carpenter
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`’472 provides a lock design that is integrally connected or secured to the wear
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`member– the most frequently replaced components of wear assemblies. The lock
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`may thereby be preferably shipped and/or stored in combination with the wear
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`member. Id. 11:11-19. The lock may be shipped or stored in either the hold posi-
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`tion (where the lock can hold the wear member to the nose) or the release positions
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`(where the wear member can be installed or removed from the nose). Id. See also
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`id. 9:34-40. The lock also arrives new with a new wear member.
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`Keeping the lock always secured to the wear member results in less shipping
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`costs than separate shipments, reduced storage needs, and less inventory concerns.
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`Id. 2:56-61. And securing the lock in both the hold and release positions reduces
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`the risk of dropping or losing the lock. Id. 2:58-67. This arrangement virtually
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`eliminates the risk of losing the locks in storage or at the installation site in the
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`field, and eases the installation process. Id. 11:5-10. An integral lock of the Car-
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`penter invention reduces costs, eases handling and installation, leads to reduced
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`downtime for mining machines, and allows for more productive mining without
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`sacrificing safety, ease, or performance. See, e.g., id. 2:56-3:28.
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`12
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`f) Other forms of locks are non-analogous.
`The conditions encountered by GETs, and especially their wear members and
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`locks, are so unique (e.g., extremity of wear, multi-directional forces and moments,
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`ever-changing dimensions, compacting fines, etc.) that they exist in a world apart
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`from other machine