`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner
`
`___________________
`
` Case IPR2018-01091
`Patent 8,308,395
`___________________
`
`
`
`DECLARATION OF RALPH V. WILHELM, PH.D. IN SUPPORT OF
`PATENT OWNER’S RESPONSE AND CONTINGENT MOTION TO
`AMEND
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Wirtgen EX2004
`Caterpillar v. Wirtgen
`IPR2018-01091
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`TABLE OF CONTENTS
`
`X.
`
`INTRODUCTION ........................................................................................... 1
`I.
`SUMMARY OF TRIAL GROUNDS ............................................................. 2
`II.
`SUMMARY OF OPINIONS ........................................................................... 3
`III.
`IV. QUALIFICATIONS ........................................................................................ 3
`V. MATERIALS CONSIDERED ........................................................................ 5
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`VII. APPLICABLE LEGAL STANDARDS ........................................................10
`VIII. OVERVIEW OF THE ’395 PATENT ..........................................................15
`A.
`Technology Background .....................................................................15
`
`Summary of the ’395 Patent ................................................................29
`B.
`
`C.
`Summary of the ’395 Patent’s Prosecution History ............................34
`
`D.
`Italian Litigation of Counterpart European Patent EP 2010714 .........37
`
`Claim Construction..............................................................................40
`E.
`
`“Milling Operation” ..................................................................41
`1.
`2.
`“Selected Subset” ......................................................................43
`IX. SUMMARY OF THE APPLIED REFERENCES ........................................45
` U.S. Patent Publication No. 2002/0047301 to Davis ..........................45 A.
`
`U.S. Patent Publication No. 2002/0154948 to Brabec et al. ...............52
`B.
`
`U.S. Patent No. 6,286,606 to Krieg et al. ............................................55
`C.
`
`PATENTABILITY OF THE CHALLENGED CLAIMS OVER THE
`APPLIED REFERENCES .............................................................................56
`A.
`Brabec is not analogous art to the ’395 Patent. ...................................56
`
`The ’395 Patent’s field of endeavor is road milling
`1.
`machines; Brabec’s is not. ........................................................57
`Brabec also is not reasonably pertinent to the particular
`problem solved by the inventors of the ’395 Patent. ................59
`A POSA would not have been motivated to combine Davis and
`Brabec. .................................................................................................62
`
`2.
`
`B.
`
`
`
`
`- i -
`
`

`

`1.
`
`2.
`
`2.
`
`b)
`
`C.
`
`
`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`Caterpillar and Dr. Bevly based their obviousness analysis
`on an incorrect interpretation that Davis uses only two of its
`three sensors for controlling the milling drum depth and
`slope. .........................................................................................63
`a)
`A POSA would have understood that Davis teaches
`using all three sensors for controlling the milling
`drum depth and slope. .....................................................63
`A POSA would not have considered Caterpillar’s purported
`rationale for combining Davis and Brabec. ..............................66
`a)
`Caterpillar’s proposed rationale for combining Davis
`and Brabec is based on its incorrect interpretation of
`Davis. ..............................................................................66
`Brabec’s approach of automatic sensor switching
`when a sensor is “unavailable” is not acceptable for
`road milling machine applications. .................................67
`The combination of Davis and Brabec fails to disclose every
`element of independent claims 1 and 11. ............................................71
`1.
`Davis and Brabec fail to disclose a “first selected subset”
`and a “second selected subset.” ................................................71
`Davis and Brabec fail to disclose selection of “a second
`selected subset during milling operation.” ................................73
`The combination of Davis and Brabec fails to disclose or render
`obvious the “manual” technical elements of dependent claims 5
`and 15. .................................................................................................75
`Claims 3, 5-8, 10, 13, 15-17, 19, 20, 22, 24, 26 and 27 are
`patentable over the combination of Davis and Brabec. ......................77
`The combination of Davis and Krieg fails to disclose the claimed
`switchover occurs “during milling operation.” ...................................78
`XI. THE CONTINGENT CLAIM AMENDMENTS .........................................83
`A.
`The claim amendments are supported by the ’395 Patent and its
`
`priority documents ...............................................................................83
`Substitute Independent Claim 28 ........................................................84
`Substitute Dependent Claims 29-33 ....................................................89
`Substitute Independent Claim 34 ........................................................92
`
`D.
`
`
`E.
`
`
`F.
`
`
`B.
`
`C.
`
`D.
`
`
`
`
`- ii -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`Substitute Dependent Claims 35-38 ....................................................92
`E.
`
`Substitute Independent Claim 39 ........................................................92
`F.
`
`Substitute Dependent Claims 40 and 41 .............................................97
`G.
`
`Substitute Independent Claims 42 and 43 ...........................................97
`H.
`
`XII. The Claim Amendments are Patentable Over the References Discussed
`Below ...........................................................................................................103
`A.
`Independent Claims 28 and 34 ..........................................................103
`
`Independent Claim 39 .......................................................................105
`B.
`
`Independent Claims 42 and 43........................................................105
`
`
` Dependent Claims 29-33, 35-38, 40, and 41 .....................................106 D.
`XIII. CONCLUSION ............................................................................................107
`Appendix A: Claim Listing ....................................................................................108
`
`
`
`
`
`
`- iii -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`I.
`
`INTRODUCTION
`
`I, Ralph V. Wilhelm, declare as follows:
`
`1.
`
`I have been retained on behalf of Wirtgen America, Inc. (“Wirtgen”)
`
`for the above-captioned inter partes review proceeding to provide my expert
`
`opinions and expert knowledge. I understand that this proceeding involves U.S.
`
`Patent No. 8,308,395 (“the ’395 Patent”) titled “Road construction machine,
`
`leveling device, as well as method for controlling the milling depth or milling
`
`slope in a road construction machine,” and that the ’395 Patent is currently
`
`assigned to Wirtgen.
`
`2.
`
`I understand that in response to a Petition submitted by Caterpillar
`
`Inc. (“Caterpillar”), an inter partes review of claims 1, 3, 5–8, 10, 11, 13, 15–17,
`
`19, 20, 22, 24, 26, and 27 of the ’395 Patent was instituted by the Patent Trial and
`
`Appeal Board (“the Board”) on November 29, 2018.
`
`3.
`
`The ’395 Patent describes a road milling machine, as well as a
`
`leveling device and associated methods for controlling the milling depth or milling
`
`slope of a road surface, in which it is possible to change the sensors without any
`
`interruption to the act of milling. I am familiar with the technology described in the
`
`’395 Patent as of its earliest claimed priority date, April 27, 2006.
`
`4.
`
`I have been asked to provide my independent technical review,
`
`analysis, insights, and opinions regarding the ’395 Patent and the references that
`
`
`
`- 1 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`form the basis for the grounds of unpatentability set forth in the Petition for inter
`
`partes review of the ’395 Patent filed by Caterpillar in the case IPR2018-01091.
`
`5.
`
`In preparing this declaration, I have reviewed and am familiar with all
`
`the documents cited herein. I have reviewed and am familiar with the ’395 Patent
`
`and its file history. I confirm that to the best of my knowledge the accompanying
`
`exhibits are true and accurate copies of what they purport to be, and that an expert
`
`in the field would reasonably rely on them to formulate opinions such as those set
`
`forth in this declaration.
`
`6.
`
`I am being compensated at my customary rate of $450 per hour for
`
`my work on this case. My compensation is not dependent upon my opinions, my
`
`testimony, or the outcome of this case.
`
`II.
`
`SUMMARY OF TRIAL GROUNDS
`
`7.
`
`I understand that the Board instituted trial on the following Grounds,
`
`with independent claims 1, 11, 20, 26, and 27 set forth in bold.
`
`Ground
`
`Claims
`
`Alleged Basis for
`Unpatentability
`
`1
`
`2
`
`1, 3, 5-8, 10, 11, 13, 15-17, 19, 20,
`22, 24, 26, and 27
`
`Obvious over Davis and
`Brabec
`
`1, 6, 8, 10, 11, 16, 17, 19, 20, 24, 26,
`and 27
`
`Obvious over Davis and
`Krieg
`
`
`
`- 2 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`III. SUMMARY OF OPINIONS
`In my opinion, the challenged claims of the ’395 Patent would not
`8.
`
`have been obvious in view of the combinations of references Caterpillar asserts. In
`
`particular, I disagree with the opinions and conclusions presented in the declaration
`
`of Caterpillar’s declarant, Dr. David M. Bevly, regarding the obviousness of the
`
`challenged claims of the ’395 Patent.
`
`9.
`
`It is also my opinion that the contingent claim amendments submitted
`
`by Wirtgen are supported in the original disclosure of the ’395 Patent and its
`
`priority documents, and that the contingent amendments are patentable over the
`
`references I discuss below.
`
`IV. QUALIFICATIONS
`In forming the opinions expressed in this declaration, I have
`10.
`
`considered and relied upon my education, background, and experience. In addition,
`
`I have reviewed and relied upon additional materials in preparation of this
`
`declaration, as described below.
`
`11. My experience and education are detailed in my curriculum vitae
`
`(“CV”), a copy of which is provided as Exhibit 2005. My CV also lists
`
`publications on which I am a named author and identifies cases in which I have
`
`previously provided expert testimony.
`
`
`
`- 3 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`I founded Wilhelm Associates, LLC in 2001 as an independent
`
`12.
`
`consulting firm. Wilhelm Associates serves automotive electronics suppliers and
`
`original equipment manufacturers (OEMs) that supply and produce technology for
`
`all types of automobiles—from conventional passenger cars to heavy-duty trucks.
`
`We specialize in a variety of technologies relating to automotive electronics and
`
`systems engineering, including closed loop feedback control systems with
`
`appropriate sensors, actuators, and algorithms.
`
`13.
`
`I previously worked seven years as a Senior Research Scientist for
`
`General Motors Research Laboratories, researching and developing various
`
`electronic sensors, transducers, and smart sensors for electronic processing. I also
`
`spent 23 years working for two divisions of General Motors, AC Spark Plug and
`
`Delco Electronics, including 14 years working for Delco where I held several
`
`positions including Director of Advanced Development & Systems Integration.
`
`14. All told, I have over forty-seven years of continuous industrial and
`
`consulting experience.
`
`15. During this time, I have also authored dozens of published technical
`
`papers addressing various aspects of automotive electronic systems, and I have
`
`been named as an inventor on three U.S. patents directed to processing and
`
`materials for automotive sensors.
`
`
`
`- 4 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`I received a Bachelor of Science in Electrical Engineering in 1967
`
`16.
`
`from Cornell University, and a Ph.D. in Material Science/Ceramic Engineering
`
`from Rutgers University in 1972. I also received an MBA (Operations & Strategy)
`
`from the University of Michigan in 1987.
`
`17. My CV has further details on my education, experience, publications,
`
`and other qualifications. (EX2005.)
`
`V. MATERIALS CONSIDERED
`I have reviewed and relied upon the documents and materials cited
`18.
`
`herein, in preparation of this declaration.
`
`19.
`
`In particular, I have reviewed the Declaration of Jan Schmidt, Vice
`
`President of Product Support at Wirtgen, regarding the state of the art in road
`
`milling machines and their operation as of the priority date of the ’395 Patent.
`
`20.
`
`I have also visited Wirtgen’s facility and training center in Antioch,
`
`TN. During that visit, I inspected a road milling machine (Wirtgen Model W 200
`
`Hi) incorporating a Level Pro control system that embodies features of the claimed
`
`inventions of the ’395 Patent. Also during that visit, I interviewed an experienced
`
`Wirtgen machine operator and trainer regarding various components and aspects of
`
`road milling machines, and typical application-related issues that arise during the
`
`act of road milling.
`
`
`
`- 5 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`
`
`Dr. Wilhelm pictured inspecting a Level Pro operator control panel of
`
`a Wirtgen road milling machine at Wirtgen’s facility in Antioch, TN.
`
`21.
`
`I have also reviewed relevant portions of the Asphalt Recycling and
`
`Reclaiming Association’s Basic Asphalt Recycling Manual (EX2007) that I
`
`understand was published in 2001, and a Wirtgen Manual for the Application of
`
`Cold Milling Machines (EX2009) that I understand was published in January 2004.
`
`22.
`
`I found all of these inspections, conversations, and materials to be
`
`useful in understanding the knowledge base and mindset of a person skilled in the
`
`art at the time of the inventions of the ’395 Patent.
`
`
`
`- 6 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`In forming my opinions, I understand patent claims must be
`23.
`
`understood as a person of ordinary skill in the art at the time of invention
`
`(“POSA”) would understand them unless the patent provides a different explicit
`
`definition. I understand a POSA refers to a person who is trained in the relevant
`
`technical field of a patent without possessing extraordinary or otherwise
`
`exceptional skill. I further understand factors such as the education level of those
`
`working in the field, sophistication of the technology, types of problems
`
`encountered in the art, prior art solutions to those problems, and the speed at which
`
`innovations are made which may help establish the level of ordinary skill in the art.
`
`24.
`
`In my opinion, Caterpillar has, generally speaking, proposed an
`
`appropriate level of ordinary skill: a POSA here would have a bachelor’s degree in
`
`mechanical engineering or an equivalent degree and two to five years of
`
`experience with machine control systems using sensors; or seven to ten years of
`
`experience with machine control systems using sensors. (Petition, 7; EX1002,
`
`¶22.).
`
`25. However,
`
`in my opinion, Caterpillar’s analysis regarding
`
`the
`
`perspective of a POSA is flawed because it fails to apply that level of skill to the
`
`appropriate technical field (i.e., the art) of the ’395 Patent. This flawed
`
`
`
`- 7 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`understanding ignores the experiences and perspectives that a POSA would have
`
`gained from studying and/or working in the field.
`
`26. As discussed below, the ’395 Patent is directed to the art of road
`
`milling machines and road milling machine control. (See Sections VIII.A and
`
`VIII.B.) Thus, in my opinion, it is imperative that the hypothetical POSA would
`
`need to have at least some understanding of road milling machines and milling
`
`operations.
`
`27.
`
`I note Dr. Bevly acknowledged different types of machines “each
`
`offer their own unique challenges” for implementing control systems (EX2006,
`
`41:11-16) and, therefore, “the environment it’s operating in” is a consideration
`
`when implementing a control system for a specific type of machine. (EX2006,
`
`40:12-22).
`
`28.
`
`I agree, and it is further my opinion that implementing a control
`
`system on a highly-specialized machine, such as a road milling machine, requires
`
`consideration of the “unique challenges” associated with that machine. That is why
`
`I engaged in additional self-education regarding road milling machines in
`
`preparation for this declaration, and believe this self-education was essential to
`
`understanding
`
`the application-specific issues associated with road milling
`
`machines before forming my opinions.
`
`
`
`- 8 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`29. For example, as noted above, I reviewed relevant portions of the
`
`Asphalt Recycling and Reclaiming Association’s Basic Asphalt Recycling Manual
`
`(2001) (EX2007), Wirtgen’s Manual for the Application of Cold Milling Machines
`
`(2004) (EX2009), and visited Wirtgen’s U.S. headquarters to physically inspect a
`
`road milling machine firsthand–including the Wirtgen Level Pro control system
`
`that embodies features of the claimed inventions of the ’395 Patent. While
`
`inspecting the road milling machine, I was accompanied by an experienced road
`
`milling machine operator and trainer and I was able to ask questions about the
`
`operation and application-related issues of road milling machines. This experience
`
`has informed my opinions. Further, I reviewed the Declaration of Jan Schmidt, an
`
`expert in road milling machine technology and operation. (EX2008.)
`
`30. Because Dr. Bevly does not have meaningful firsthand experience
`
`with road milling machines, and because he does not claim to have engaged in the
`
`necessary self-education to understand the perspective of a person with such
`
`experience, it is my opinion that Caterpillar and Dr. Bevly ignored important
`
`application-related considerations in the art of road milling machines. For this
`
`reason, it is my opinion that Dr. Bevly is not sufficiently familiar with the
`
`perspective of a POSA in the art of the ’395 Patent—the art of road milling
`
`machines.
`
`
`
`- 9 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`VII. APPLICABLE LEGAL STANDARDS
`I have been told the following legal principles apply to analysis of
`31.
`
`patentability. I also have been told that, in an inter partes review proceeding, a
`
`patent claim may be deemed unpatentable if it is shown by a preponderance of
`
`evidence that the claim is anticipated by one prior art reference under § 102, or
`
`rendered obvious by one or more prior art patents or publications under § 103.
`
`32.
`
`I understand
`
`that documents and materials such as printed
`
`publications or patents that qualify as prior art can be used to invalidate a patent
`
`claim as anticipated or as obvious.
`
`33.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation or obviousness of a patent
`
`claim requires a comparison of the properly construed claim language to the prior
`
`art on a limitation-by-limitation basis.
`
`34.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all elements of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., they are necessarily present).
`
`The fact that a prior art article or process may possibly possess the characteristics
`
`of the claimed subject matter is not sufficient to anticipate the claimed subject
`
`matter. I understand that inherency must be a necessary result and not merely a
`
`possibility.
`
`
`
`- 10 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`I also understand that a patent may not be obtained “if the differences
`
`35.
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains.”
`
`36. When considering the issues of obviousness, I have been told that I
`
`am to do the following:
`
`a.
`
`b.
`
`c.
`
`d.
`
`Determine the scope and content of the prior art;
`
`Ascertain the differences between the prior art and the claims at
`
`issue;
`
`Resolve the level of ordinary skill in the pertinent art; and
`
`Consider evidence of secondary indicia of non-obviousness (if
`
`available).
`
`37. With respect to determining the proper scope of prior art to examine, I
`
`understand that in order for a prior art reference to be properly used in an
`
`obviousness ground under 35 U.S.C. § 103, the prior art reference must be
`
`analogous art to the claimed invention. I have been told that a reference is
`
`analogous art to the claimed invention only if: (1) the reference is from the same
`
`field of endeavor as the claimed invention; or (2) the reference is reasonably
`
`pertinent to the particular problem solved by the inventor.
`
`
`
`- 11 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`I understand that factors relevant to determining the proper field of
`
`38.
`
`endeavor include the inventor’s explanations of the subject matter (including the
`
`patent specification), as well as the claimed invention’s structure and function. And
`
`I further understand that to be reasonably pertinent to the particular problem solved
`
`by the inventor, a prior art reference must logically commend itself to the
`
`inventor’s attention in considering his or her problem.
`
`39.
`
`I have been told that an analogous reference may be modified or
`
`combined with other analogous references or with the POSA’s own knowledge if
`
`the person would have found the modification or combination obvious. I have also
`
`been told that a POSA is presumed to know all the relevant, analogous prior art,
`
`and the obviousness analysis may take into account the inferences and creative
`
`steps that a POSA would employ.
`
`40.
`
`In determining whether a prior art reference could have been
`
`combined with another prior art reference or other information known to a POSA, I
`
`have been told that the following principles may be considered:
`
`a.
`
`A combination of familiar elements according to known
`
`methods is likely to be obvious if it yields predictable results;
`
`b.
`
`The simple substitution of one known element for another is
`
`likely to be obvious if it yields predictable results;
`
`
`
`- 12 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`The use of a known technique to improve similar devices,
`
`c.
`
`products, or methods in the same way is likely to be obvious if
`
`it yields predictable results;
`
`d.
`
`The application of a known technique to a prior art reference
`
`that is ready for improvement is likely obvious if it yields
`
`predictable results;
`
`e.
`
`Any need or problem known in the field and addressed by the
`
`reference can provide a reason for combining the elements in
`
`the manner claimed;
`
`f.
`
`A skilled artisan often will be able to fit the teachings of
`
`multiple references together like a puzzle; and
`
`g.
`
`The proper analysis of obviousness requires a determination of
`
`whether a POSA would have a “reasonable expectation of
`
`success”—not
`
`“absolute predictability” of
`
`success—in
`
`achieving the claimed invention by combining prior art
`
`references.
`
`41.
`
`I understand that whether a prior art reference renders a claim
`
`unpatentable as obvious is determined from the perspective of a POSA. I have also
`
`been told that, while there is no requirement for the prior art to contain an express
`
`suggestion to combine known elements to achieve the claimed invention, a
`
`
`
`- 13 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`suggestion to combine known elements to achieve the claimed invention may come
`
`from the prior art as a whole or individually, as filtered through the knowledge of
`
`one skilled in the art. In addition, I have been told the inferences and creative steps
`
`a person of ordinary skill in the art would employ are also relevant to the
`
`determination of obviousness.
`
`42.
`
`I also understand that when a work is available in one field, design
`
`alternatives and other market forces can prompt variations of it, either in the same
`
`field or in another. I have also been told that if a POSA can implement a
`
`predictable variation and would see the benefit of doing so, that variation is likely
`
`to be obvious. I have been told that in many fields, there may be little discussion of
`
`obvious combinations, and in these fields market demand—not scientific
`
`literature—may drive design trends. I have been told that, when there is a design
`
`need or market pressure and there are a finite number of predictable solutions, a
`
`POSA has good reason to pursue those known options.
`
`43.
`
`I have been told there is no rigid rule prescribing a reference or
`
`combination of references must contain a “teaching, suggestion, or motivation” to
`
`combine references. But I also have been told that the “teaching, suggestion, or
`
`motivation” test can be a useful guide in establishing a rationale for combining
`
`elements of the prior art. I have been told this test poses the question as to whether
`
`there is an express or implied teaching, suggestion, or motivation to combine prior
`
`
`
`- 14 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`art elements in a way that realizes the claimed invention, and that it seeks to
`
`counter impermissible hindsight analysis.
`
`44.
`
`I understand that the relevant time for considering whether a claim
`
`would have been obvious to a POSA is the time of the invention, which I have
`
`been told to assume for this case is April 27, 2006.
`
`VIII. OVERVIEW OF THE ’395 PATENT
`45. U.S. Patent No. 8,308,395 is titled “Road construction machine,
`
`leveling device, as well as method for controlling the milling depth or milling
`
`slope in a road construction machine.” The ’395 Patent issued from U.S.
`
`Application No. 13/098,798, filed on May 2, 2011. The ’395 Patent is a
`
`continuation of U.S. Patent No. 7,946,788, which ultimately claims priority to
`
`German Patent Application No. DE 102006020293.7, filed on April 27, 2006.
`
`
` Technology Background A.
`46. The ’395 Patent relates to a road milling machine, as well as a
`
`leveling device and associated methods for controlling the milling depth or milling
`
`slope of a road surface, in which it is possible to change the sensors without any
`
`interruption to the act of milling. (EX1001, 1:54-58. )
`
`47. Road milling machines include a milling drum having an array of
`
`cutting tools to work a ground surface. (See, e.g., EX1004, [0032]; EX2007, 5-7;
`
`EX2009, 16-19.) I understand that at the time of the ’395 Patent inventions, milling
`
`
`
`- 15 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`drums for large road milling machines were rigidly fixed to the machine frame and
`
`did not pivot or otherwise move relative to the frame. The position of the milling
`
`drum was adjusted by adjusting the elevations of various lifting columns associated
`
`with the frame. (See, e.g., EX1004, [0037]; EX2009, 19.)
`
`48. As the rotating milling drum is lowered into a ground surface at a
`
`given milling depth, the cutting tools mill away associated layers of the ground
`
`surface. (EX1004, [0002]; EX2007, 5-7; EX2009, 16-19.) The milling drum is
`
`typically bounded on all four sides so as to prevent milled material from being
`
`ejected from underneath the road milling machine. A conveyor is typically used to
`
`deposit the milled material into a vehicle such as a dump truck for transport away
`
`from a job site, as illustrated below.
`
`(EX2009, 16.)
`
`
`
`
`
`- 16 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`49. At the time of the ’395 Patent inventions, road milling machines were
`
`known to include a combination of sensors and devices for regulating an
`
`orientation of the machine to provide an even milled surface. (EX1001, 1:11-13;
`
`EX2007, 120, EX2009, 140-151.) The ’395 Patent’s background section discusses
`
`prior-art milling machines with known grade and slope control systems that used
`
`external reference sensors to automatically produce a desired roadway profile.
`
`(See, e.g., EX1001, 1:14-24.) Such milling depth control systems relied on sensors
`
`to “scan[] the reference surface…very precisely.” (EX1001, 1:14-27; see also
`
`EX1007, 18:54-19:2 (discussing “elevation sensors” that “respond[] to an elevation
`
`reference…specifying the grade of a reference plane”).
`
`50. A number of such sensors were available for use by conventional
`
`milling depth control systems to sense an elevation reference external to the road
`
`milling machine. The Manual for the Application of Cold Milling Machines
`
`discusses the various grade and slope control sensors available for use on Wirtgen
`
`machines as of January 2004. (EX2009, 140-151.) For the purposes of this
`
`declaration, I cite to the Application Manual only to illustrate what types of sensors
`
`and sensor system technologies were available at least as early as 2004. Some of
`
`these sensors are summarized in the figures below.
`
`
`
`- 17 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`
`
`(EX2009, 140.)
`
`
`
`
`
`[INTENTIONALLY LEFT BLANK]
`
`
`
`- 18 -
`
`

`

`
`
`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`Sensing
`
`
`Side panel
`eae
`Wire-rope
`Ultrasonic
`
`Reference wire
`-—_l__
`Transducing
`Sonic ski
`sensor
`
`In front of the drum
`—__l__,
`
`Wire-rope
`
`Slope control
`sensor
`
`
`
`Levelling
`
` |
`
`
`
`
`
`
`Ultrasonic I
`
`
`
`
`
`3D control
`
`1
`
`Multiplex
`
`Laser
`
`(EX2009, 141.)
`
`
`
`
`
`- 19 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`51. For example, it was known to mount a wire-rope sensor to the side
`
`plates (i.e., edge protectors) on the left and right sides next to the milling drum and
`
`thus scan the reference surface, e.g., a previously milled traffic lane. (Id. at 142.)
`
`(EX2009, 142.)
`
`
`
`52. Similarly, POSAs also knew to attach wire-rope sensors to a sensing
`
`shoe that could float in front of the milling drum to sense the height of the ground
`
`surface in front of the drum. (Id. at 144.)
`
`
`
`- 20 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`(EX2009, 144.)
`
`
`
`53. The Application Manual explains that an ultrasonic sensor “operates
`
`contact-free and is therefore not subject to any mechanical wear and tear…. A
`
`major advantage lies not only in its accuracy, but also in the variety of ways in
`
`which it can be used for sensing: at the drum panel, at the side of the drum and also
`
`in front of the drum (milling flush to the unpaved shoulder).” (Id. at 142.)
`
`
`
`- 21 -
`
`

`

`(EX2009, 142)
`
`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`
`
`
`
`(EX2009, 144.)
`
`54. POSAs also utilized sonic ski sensors (multiple ultrasonic sensors) for
`
`scanning a grade line, as well as for scanning a reference surface. Sonic ski sensors
`
`
`
`- 22 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`could be used to sense a string line instead of mechanical transducer sensors or
`
`even to sense both a string line and the ground surface simultaneously to
`
`“compensate any unevenness in the pavement to be removed.” (Id. at 143.)
`
`(EX2009, 143.)
`
`
`
`55. Three or more sensors could be implemented on both sides of the
`
`machine in a Multiplex system to sense the reference surfaces. The controller
`
`would calculate a mean value from the three measured values to compensate for
`
`unevenness, the system essentially functioning in the same way as a long averaging
`
`ski. The Application Manual states that the front and rear sensors were typically
`
`
`
`- 23 -
`
`

`

`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`ultrasonic sensors positioned using swivel arms, while the sensors next to the drum
`
`were typically ultrasonic or wire-rope sensors. (Id. at 146-147.)
`
`(EX2009, 146.)
`
`
`
`56. Slope sensors are also integrated into the road milling machine to
`
`measure the slope, i.e., the tr