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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner
`
`___________________
`
` Case IPR2018-01091
`Patent 8,308,395
`___________________
`
`
`
`DECLARATION OF JAN SCHMIDT
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Wirtgen EX2008
`Caterpillar v. Wirtgen
`IPR2018-01091
`
`
`
`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`
`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. MY BACKGROUND ...................................................................................... 1
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`III. THE STATE OF THE ART OF ROAD MILLING MACHINES .................. 2
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`A. Overview of Road Milling Machines and Operation ............................ 2
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`B.
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`C.
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`D.
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`Considerations for Road Milling Operations ........................................ 6
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`Sensor Use and Switching ..................................................................... 7
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`Existing Systems as of April 27, 2006 ................................................13
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`IV. CONCLUSION ..............................................................................................16
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`I.
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`INTRODUCTION
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`I, Jan Schmidt, declare as follows:
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`1.
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`I am an employee of Wirtgen America, Inc. (“Wirtgen”). I have
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`worked at Wirtgen for thirty-three years. I am currently the Vice President of
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`Product Support.
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`2.
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`I understand that this declaration is being submitted as evidence in a
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`proceeding before the Patent Trial and Appeal Board of the United States Patent
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`and Trademark Office.
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`3.
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`I have been asked to provide my independent insights regarding the
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`state of the art of road milling machines and operation as of April 27, 2006, which
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`I have been informed by counsel is the relevant date for this proceeding.
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`4. My compensation is not dependent upon my statements or testimony
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`or the outcome of this case.
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`II. MY BACKGROUND
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`5.
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`I attended the University of Hamburg and pursued a degree in
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`computer science and physics at Middle Tennessee State University.
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`6.
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`I joined Wirtgen in January 1986 where the product range at that time
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`consisted of road milling machines and hot recyclers. I started out setting up a parts
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`warehouse and
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`inventory program, and soon began attending product
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`U.S. Patent No. 8,308,395
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`demonstrations and startups with service technicians, learning from the ground-up
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`how to operate, maintain, and service road milling machines.
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`7.
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`I served as a product support manager from 1994 to 2007, and then
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`was promoted to my current position as Vice President of Product Support. My
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`current responsibilities include technical service support (remote and in the field),
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`parts planning and purchasing, inventory management, service and parts training
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`for customer, dealer and internal personnel, warranty, inbound and outbound
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`logistics for all whole units (i.e., machines) and parts, and machine registrations.
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`III. THE STATE OF THE ART OF ROAD MILLING MACHINES
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`8.
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`Below I discuss the state of the art of road milling machines as of
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`April 27, 2006.
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`A. Overview of Road Milling Machines and Operation
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`9.
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` Road milling machines, also known as cold planers, are used in the
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`construction of roads and other paved surfaces. They excavate existing ground
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`material, such as asphalt, concrete, or soil to create a base surface that is ready to
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`support new layers of material, such as asphalt or concrete. The road milling
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`machine must be capable of removing material and leaving behind a surface that
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`meets the desired depth, smoothness, and slope specifications for the specific job.
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`Achieving the specified depth and smoothness on both sides of the machine with
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`U.S. Patent No. 8,308,395
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`tolerances of less than a few millimeters is desirable, and sometimes required, for
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`road milling operations.
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`10. Most road construction contracts include bonuses/penalties based on
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`the precision and timeliness of a completed job. If a road milling machine is not
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`sufficiently precise, it may be necessary to repeat the road milling operation or
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`alternatively to make corrections during the process of laying asphalt or concrete.
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`Having to perform either of these can make the difference in whether or not a
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`project is completed to specification, on-time, and within budget.
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`11. A typical road milling machine is provided in one of three size
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`classifications: large, compact, and small. Large machines are designed to mill out
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`a width approximately half of a standard traffic lane on a road (half-lane models)
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`or more (full lane models)—between six to eight feet for half lane models and up
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`to 14 feet for full lane models. Smaller road milling machines can remove material
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`from narrower traffic lanes, shoulders, etc. or closer to adjacent obstacles such as
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`manholes.
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`12. Shown below is an image of a Wirtgen W220i road milling machine,
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`which is a current example of a large half lane road milling machine. The Wirtgen
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`W220i is over fifty feet long, having a frame nearly ten feet wide and a 2.2 meter
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`drum, and weighs over 80,000 pounds during operation. (Id. at 44-47.)
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`(Ex. 2014 at 1.)
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`13. Shown below is an image of a Wirtgen W 2000 road milling machine,
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`which is an example of a half lane road milling machine in existence prior to April
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`27, 2006.
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`(Ex. 2009 at 80.)
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`U.S. Patent No. 8,308,395
`14. Large Road milling machines usually travel on four track units located
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`at each of the four corners of the machine. Each track unit is connected to an
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`actuator that can be adjusted vertically to control the height of the road milling
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`machine over the ground. The milling is accomplished by a milling drum that is
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`usually mounted underneath the machine frame at the center of the road milling
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`machine and between the front and rear axles of the track units.
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`15. As the milling drum rotates and is lowered to a milling depth with
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`respect to the unmilled road surface, cutting tools along the surface of the drum
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`excavate material. The excavated material is typically delivered to a dump truck
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`via a conveyor located at the front of the road milling machine, although rearward
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`conveyors are also available.
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`16. For standard road milling operations, where individual layers or even
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`entire pavement structures of road surfaces can be removed, the road milling
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`machine may include a milling drum having a tool spacing of about 15mm. Fine
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`road milling operations are also available which typically remove only a few
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`millimeters of a road surface. The milling drums for these applications may have a
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`tool spacing of only about 5-8mm.
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`(Ex. 2009 at 117.)
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`
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`B. Considerations for Road Milling Operations
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`17.
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`In my experience, road milling machines require significant operator
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`interaction in order to achieve a consistent, quality cut. This was as true in 2006 as
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`it is today. Typically in U.S. operations, the operator is riding on the road milling
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`machine and a ground person is walking alongside the machine. The operator is
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`responsible for steering the machine, controlling the position of the discharge
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`conveyor and may communicate with the drivers of the dump trucks for efficient
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`loading and to prevent collisions. The ground person is often very experienced in
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`road milling operations and takes primary responsibility in correctly positioning
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`the machine by giving the operator direction, monitoring the road surface and
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`making milling depth adjustments. Additional ground personnel may follow
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`behind the machine with instruments to confirm the milling depth and slope.
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`U.S. Patent No. 8,308,395
`18. When obstacles such as manholes are present in the road surface to be
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`milled, the milling drum may need to be lifted out of the cut and over the obstacle.
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`Operators also need to account for conditions adjacent to the milling track, such as
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`curbs or unpaved shoulders which can impact the road milling operation. The
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`depth and/or slope specifications of a milling job can change frequently: 25, 50, or
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`100-foot specifications are common in these types of jobs, especially for curves in
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`the road, and operators must be preemptive to account for these changing
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`specifications.
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`19. During the road milling operation, the respective heights of lifting
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`columns on the left side and the right side of the machine are adjusted according to
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`signals from sensors. An operator (typically the ground person walking along with
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`the machine) determines whether the lifting columns on a given side are controlled
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`based on a target milling depth or based on a target slope.
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`C. Sensor Use and Switching
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`20. Road milling machines include many sensors, for example, wire-rope
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`sensors, ultrasonic sensors, laser sensors, and/or slope sensors. Some sensors are
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`used specifically to measure a distance to the ground surface, milled or unmilled
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`depending on the location of the sensor. Other sensors such as 3D systems can
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`even detect the absolute position of the machine. Grade and slope control systems
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`making use of such sensors have been provided on road milling machines to
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`prevent operating errors for many years. The most common sensors used for
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`controlling the depth and slope of the cut are elevation reference sensors, which are
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`typically located on the side plates or attached to the frame of the road milling
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`machine, and a slope sensor attached to the machine frame and above the milling
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`drum. Elevation reference sensors sense the elevation of an external reference, for
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`example, the road surface, a string line, a curb, etc. Slope sensors sense the
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`transverse inclination of the road milling machine relative to the horizon.
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`21. The sensors being used to control grade and slope may need to be
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`switched frequently by an operator during a road milling operation. An operator
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`may more easily respond to the changing specifications of a milling job by causing
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`one side of the machine to be adjusted based on slope, for example on curves, and
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`then switching back to depth control for straighter stretches of road with consistent
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`specifications. An operator may identify that one or more tracks of the machine are
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`approaching a pothole or other obstruction that may cause the machine to drop or
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`dip, such that preemptively switching to slope control may be temporarily
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`preferred.
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`22. Generally speaking, a milling depth control is only as good as a
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`quality of the external reference, and it is critical that operators have the ability to
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`make control parameter adjustments based on oncoming or expected conditions.
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`23. For example, if the road milling machine is milling flush to an
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`unpaved shoulder on the right side of the road, the right-side plate may sink into
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`the soft shoulder surface or otherwise fall beyond the cut surface. In this case, a
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`wire-rope height sensor on the right-side plate will not provide an accurate value
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`for determining the milling depth. When the operator identifies this condition,
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`he/she can switch control of the right side to be based on a measured slope or a
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`wire-rope height sensor in front of the drum.
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`(Ex. 2009 at 144.)
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`(Id., at 145.)
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`
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`24.
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` As another example, if the road milling machine is approaching and
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`will be milling flush to a curb on the right side of the road, the right-side plate may
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`be hydraulically lifted from the initial reference surface to slide along the top edge
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`of the curb. Because the side plates are very heavy, in some cases it is preferred to
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`simply lift the side plates completely above the curb. In either event, or simply
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`because the operator determines that the right-side plate would not provide a
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`sufficiently accurate measurement throughout the road milling operation, the
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`operator can again switch control of the right side to be based on a measured slope
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`or an alternative elevation reference surface.
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`25.
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`If the road milling machine is making a second cut in a road surface
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`and approaching the end of a first (previous) cut in the same road surface, it may
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`U.S. Patent No. 8,308,395
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`be preferred to lift the appropriate side plate out of the cut to avoid jamming the
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`side plate against the vertical surface resulting from the first cut. As with the other
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`two examples, lifting the side plate would prevent accurate height measurements
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`using the wire-rope sensor on the side plate, and the operator should switch to
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`control for that side based on a measured slope value.
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`[INTENTIONALLY LEFT BLANK]
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`U.S. Patent No. 8,308,395
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`reeSs
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`Milling the second cut: The right-hand side plate sides on the milfed surface of the first cut.
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`HENSSyHeNay
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`When approaching the and of the cut, the right-hand side plate is lifted without having to intarnspt milling.
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`
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`The machine can work to the and of the cut without having to interrupt milling. Jamming of the side plate is prevent-
`ed.
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`
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`(Ex. 2009 at 90.)
`(Ex. 2009 at 90.)
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`D. Existing Systems as of April 27, 2006
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`26. As of April 27, 2006, many milling machines required the operator or
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`ground person(s) to physically connect and disconnect sensors from the control
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`unit. For example, if the road milling machine was expected to control both the left
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`and right sides based on milling depth, the left-side elevation reference sensor and
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`the right-side elevation reference sensor would be physically and electrically
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`connected to the control unit. If the operator determined that a switch was
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`preferable or necessary, for example if the road milling machine was approaching a
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`soft shoulder on the right side, the right-side elevation reference sensor would be
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`physically disconnected from the control unit and the slope sensor would be
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`physically connected to the control unit. Since the values for the milling depth and
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`the slope are clearly different, it was also necessary for the operator to select new
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`target values when the change was made.
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`27. The specifications for road milling operations are very precise and
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`automatic control is typically preferred. During the time that it took for operators
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`to physically disconnect and connect the appropriate sensors, and then change the
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`target settings, it was not practical to continue the road milling operation in an
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`uncontrolled (manual) mode or to leave the road milling machines running in a
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`controlled (automatic) mode. The same difficulty existed on models of milling
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`machines which had an electrical switch over system, therefore eliminating the
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`need to unplug and replug the cables and connectors, but which did not have a
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`digital display to show the selected values on the grade controller
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`28. Therefore, it was often necessary to: stop the road milling machine;
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`raise the milling drum out of the cut; make the changes to the sensors connected to
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`the control unit and the target values; lower the milling drum back into the cut; and
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`finally continue advancing the road milling machine. This could be problematic,
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`not only because of the lost time involved, but because unless the milling drum
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`could be returned to exactly the same specifications as before it was raised out of
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`the cut, there would typically be a bump or divot in the resulting milled surface. In
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`addition, when the milling drum is raised out of the cut, this also potentially causes
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`milled material to spill out from the drum area which otherwise would be bounded
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`on all four sides by a front panel, the left- and right-side plates and a scraper blade
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`in the rear. This material would typically need to be cleared before the drum is
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`lowered and the operation proceeds, resulting in additional delay.
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`29.
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`In other cases, the milling drum was not lifted out of the cut during
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`the exchange of sensors, but the drum would still continue to rotate and typically
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`cut deeper than desired into the road surface as the machine settles during this time
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`period. Stopping the milling drum itself was not an option, less so because of the
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`time that it takes to bring the drum rotation speed to zero but mainly due to the
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`U.S. Patent No. 8,308,395
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`excessive wear to the clutch when re-engaging the mechanical drum drive to bring
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`the drum rotation back up to speed.
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`30. Because of the need for operators to change sensors from time to time,
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`it would be impractical to continue a road milling operation if specific grade
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`sensors failed. For this reason, sensors on a road milling machine are designed to
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`be robust and withstand the movements and vibrations associated with road milling
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`operations and, therefore, sensor failure is not a significant concern in road milling
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`machine operation. However, for example, if the slope sensor failed for some
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`reason, the operator would want to stop the milling job. There are simply too many
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`conditions (including but not limited to certain curves, exit ramps, adjacent soft
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`shoulders, etc.) where slope measurements are relied upon for proper road milling.
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`If a wire-rope sensor on a side plate was to fail, for example because of the cable
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`coming loose from the spool or breaking, the operator could possibly continue
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`using available alternate elevation sensors, but it would likely require a decision
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`made by the ground person and depend on the road surface conditions and
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`specifications.
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`IV. CONCLUSION
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`31.
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`In signing this declaration,
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`I recognize that this declaration will be
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`filed as evidence in an inter partes review before the Patent Trial and Appeal
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`Board of the United States Patent and Trademark Office.
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`I also recognize that I
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`may be subject to cross-examination in the case and that cross-examination will
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`take place within the United States. If cross-examination is required, I will appear
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`for cross-examination within the United States during the timeallotted.
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`32.
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`I hereby declare that all statements made herein are of my own
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`knowledge andare true andthat all statements made on information and belief are
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`believed to be true; and further that
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`these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
`
`~
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`Executed on this © day of March 2019.
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`
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`-16-
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`
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