`
`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 B2
`___________
`
`Record of Oral Hearing
`Held: August 22, 2019
`___________
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
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`Case IPR2018-01091
`Patent 8,308,395 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOSHUA L. GOLDBERG, ESQ.
`of: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 408-6092
`joshua.goldberg@finnegan.com
`
`
`ABHAY A. WATWE, PH.D., ESQ.
`of: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`(571) 203-2716
`abhay.watwe@finnegan.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`RICHARD D. COLLER, III, ESQ.
`TREVOR M. O'NEILL, ESQ.
`of: Sterne Kessler Goldstein & Fox
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 772-8764 (Coller)
`(202) 772-8543 (O'Neill)
`rcoller@sternekessler.com
`toneill@sternekessler.com
`
`GARY MONTLE, ESQ.
`of: Patterson Intellectual Property Law, P.C.
`Roundabout Plaza
`1600 Division Street
`Suite 500
`Nashville, TN 37203
`(615) 242-2400
`glm@iplawgroup.com
`
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`Case IPR2018-01091
`Patent 8,308,395 B2
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`The above-entitled matter came on for hearing on Thursday, August
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`22, 2019, commencing at 1:00 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2018-01091
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`P-R-O-C-E-E-D-I-N-G-S
`JUDGE MARSCHALL: Good afternoon, everyone. This is a
`hearing in IPR2018-01091, between Petitioner Caterpillar Inc. and Patent
`Owner Wirtgen America, Inc., Patent N Number 8,308,395.
`I'm Judge
`Marschall. With me is Judge Cherry and Judge Mayberry.
`Let's start with appearances. Who do we have here for Petitioner?
`MR. GOLDBERG: Good afternoon, your Honor. Joshua Goldberg
`for Petitioner Caterpillar. With me is Abhay A. Watwe for Caterpillar.
`JUDGE MARSCHALL: And for Patent Owner?
`MR. COLLER: Good afternoon, your Honor. Richard Coller on
`behalf of the Patent Owner, Wirtgen America. I have with me my colleague,
`Trevor O'Neill, also of Stern Kessler, and also with me is Gary Montle of the
`Patterson IP Law Firm.
`JUDGE MARSCHALL: Thank you and welcome. Each party will
`have 45 minutes of total time to present arguments. However, given the
`number of issues in this case, if you need more time just let us know and we
`will liberally grant it. Please keep in mind that Judge Mayberry is appearing
`by video, so please refer to exhibits or slide numbers both for Judge
`Mayberry a and for the clarity of the transcript.
`Please do not interrupt the other party's presentation. You may
`object only during your arguments or following the rebuttal.
`JUDGE MARSCHALL: Petitioner will start. Would you like to
`reserve any time for rebuttal?
`MR. GOLDBERG: Yes. I'll reserve, let's say, five minutes?
`JUDGE MARSCHALL: You may begin when ready.
`MR. GOLDBERG: Thank you, your Honor.
`So starting on Slide 2, the '395 patent admits to using sensors
`including height and slope sensors, was known in the context of a leveling
`device. The problem that the '395 patent is dealing with is how to change
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`sensors without negatively influencing the work results. And moving to
`Slide 3, in particular, what that means is that it avoids having erratic
`alteration of the current adjustment values when changing from one sensor
`to anther sensor.
`Going to Slide 5, the issue that Wirtgen has is that this was already
`known in the art and we presented a couple grounds of obviousness in this
`case. I'm going to focus today on ground 1, the Davis Brabec ground. I
`want to note that Wirtgen focuses its arguments on Claims 1 and 5, so I will
`likewise focus my arguments there. In this Davis Brabec ground we rely on
`Davis for essentially everything in the claims. It's on Slide 6, Slide 7.
`Relying on Brabec for the switching aspects of the claim and
`zooming in a little bit more as to what exactly the combination is on Slide 8,
`we have Davis. We can see here that Davis includes in the top left, Figure 1,
`the physical components in the claim. For example, the cutting drum, which
`corresponds to the milling drum in the claim. It also includes the sensors in
`the claim. We can see them on the bottom right in Figure 5, and we have the
`blue and green dot sensors in 13 and 14, and also an inclination sensor at 18.
`Davis doesn't get into what happens if there is a problem with one of
`the sensors. It doesn't get into that level of detail. Now, Brabec, going to
`Slide 9, is all about how to switch sensors. And like Davis, Brabec also
`discloses multiple sensors. We can see here in Figure 4 and a left and a right
`sensor, and then if a switch happens we can bring in an alternate sensor,
`shown in Figure 5 in red.
`Now, Brabec specifically deals with what to do when you need to
`change sensors and how to avoid interrupting what's happening with the
`machine. Brabec raised some arguments about how it's not dealing with
`milling operations, and we use the term machine operations. I think that was
`already dealt with in the Institution Decision to be clear.
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`We are relying on Davis for the milling aspects of the claim. We are
`relying on Brabec for the sensor swapping part of the claim. And we can see
`here on Slide 10 that Brabec is able to automatically switch to an alternative
`operating mode. So that allows it to do it without interruption.
`Going to Slide 11, one of Wirtgen's arguments is that it doesn't do it
`without erratic alternation of the adjustment value. We would submit we
`can see that here on Slide 11 that Wirtgen does exactly that because the last
`signal offered by the alternate sensor 42 is -- I'm sorry, go ahead.
`JUDGE CHERRY: Do you mean Brabec?
`MR. GOLDBERG: Brabec, I'm sorry, yes.
`Brabec, the last signal output by the alternate sensor 42 prior to the
`right sensor 22 becoming unavailable is used as a set point. And the
`alternate sensor 42 is used to keep the right side in the same position or
`attitude so we don't have any erraticness going on because it's staying in the
`same position. So what we get here as a result, we show in Slide 12 we have
`the Davis system. And, for example, sensors 13 and 18 being two sensors
`that are being used, and then a switchover occurs and we end up with end up
`with sensors 18 and 14 being used instead. So the sensors 13 replace the
`sensors 13.
`Now, going to Slide 13, one of the big arguments that Wirtgen has
`been making is that Davis uses all three sensors all the time, so there's never
`a switch from two of the sensors to a different two of the sensors. And they
`have also taken the position that Caterpillar has been changing its position
`on this issue throughout the proceeding.
`Caterpillar has had the same position on this issue from the very
`beginning through now. We can see on Slide 13 at the top, this is actually
`an excerpt from our Petition and we say that Davis's control system,
`orientation of the cutting drum enter this and stops sensors 13 and 14, or one
`depth sensor 13 or 14 and inclination sensor 18.
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`Case IPR2018-01091
`Patent 8,308,395 B2
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`Now we go to our reply. We're saying, effectively, the same thing.
`Although Davis does not explicitly disclose how it generates its two control
`signals, a POSITA would understand that Davis's controller need use only
`two of the three different signals to generate the control signals.
`JUDGE MARSCHALL: Now, in the report at the top [of slide 13]
`you say would control?
`MR. GOLDBERG: Yes.
`JUDGE MARSCHALL: Is that based on the text of Davis, or is that
`based on experts reading between the lines?
`MR. GOLDBERG: That's expert reading between the lines.
`JUDGE MARSCHALL: Davis doesn't describe exactly what it is
`doing with the three signals received in the PLC, correct?
`MR. GOLDBERG: That's correct. I went with one, I guess, minor
`caveat and that's in the Brabec -- sorry, Davis, in paragraph 50, discusses
`what happens if no different signal ever makes it to the PLC. And even in
`that situation it is still doing its control. So I think based on that paragraph
`it's clear that it does not require the use of all the sensors at a given time.
`And if we go to slide 14, this is something that Wirtgen admitted to
`the USPTO during prosecution in relation to an EP reference that's a
`counterpart to Davis that has, effectively, the same disclosure. And they
`explicitly said to the USPTO the only that the EP reference teaches is that
`before starting a milling operation the operator can choose to control right
`and left side milling depth and slope by selecting based on sensors for any
`two of those three parameters.
`And they also doubled-down on that and said the same thing of the
`EPO; they said two sensors have to be selected prior to the milling
`operation.
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`JUDGE MARSCHALL: At one point in your petition you refer to
`Davis's unused sensor. Would you stand by that assertion that one of the
`sensors is completely unused in Davis?
`MR. GOLDBERG: I would say that it is unused in the sense that it
`is not used by the PLC for actually controlling the actuations that happen.
`Whether it's affirmatively turned off such that it can't output any signals, I
`would not go that far.
`JUDGE MARSCHALL: So in your view the PLC would possibly
`use all three of the sensors, correct?
`MR. GOLDBERG: That's our position, that when an ordinary skill
`in the art, looking at Davis, would recognize that it's only to be using two
`out of the three sensors at any time. And we have testimony from our expert
`on this issue.
`I'm moving to Slide 15, starting paragraph 107, explaining that the
`controller system would have only used two of the three sensors. Going to
`Slide 16, Dr. Bevly provide explanation why this is, and he provided a
`diagram in his declaration. Here's some explanation related to the diagram.
`The readings that come from the sensors are related in such a way
`where if you know any two, you're able to know exactly what the third
`would be. And that's dictated by this formula where the W there is the
`distance between the two sensors. So that's a known quantity. That means
`that if you know either the depth on the left or the depth on the right or the
`inclination angle, you're able to calculate any of the others based on that.
`JUDGE MARSCHALL: Do you also take the position in the
`alternative that even if the sensor is used in some sense and it's not turned
`off, it is unnecessary to control the depth and angle of the milling drop?
`MR. GOLDBERG: Yes. I would agree with that, your Honor.
`And Dr. Bevly was questioned on this during his deposition, as well,
`by Wirtgen's counsel and further explained that because there are two
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`degrees that he's trying to control, he only needs two measurements, one or
`two degrees of freedom that are there. And Dr. Wilhelm, Wirtgen's expert,
`he agrees that the analysis provided by Dr. Bevly makes sense. He admitted
`that during his deposition.
`The '395 Patent itself, going to Slide 19, it also recognizes that only
`two of the sensors need to be used at any given time. Going to Slide 20, we
`have another reference here, Swisher. That is likewise recognizing that if a
`right side and left side elevation sensors are used, then the cross control
`assembly cannot be operated. So this is actually going a little bit further and
`not just saying that you would only use two but that you can't start using a
`third.
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`Moving to Slide 21, another one of the argument that Wirtgen has
`raised relates to whether Brabec is analogous art or not. It isn't clear how
`references could be any more analogous than the Brabec reference is to the
`'395 patent. It seems like Wirtgen is wanting to raise the bar so high that a
`reference has to be anticipatory in order for it to be analogous art. That is
`simply not the law.
`Looking -- just as a very brief example, Brabec is dealing with
`construction issues. The '395, not in itself, is dealing with construction
`issues. And looking at the very first couple lines of the '395 patent, it
`generally introduces the concept of road construction machine, a leveling
`device, and a method. It does not get into any milling specific things until
`later in the specification.
`We've also had cited testimony from Mr. Netka about this in our
`reply. Exhibit 1046 is his declaration in paragraphs 35 and 36. He talks
`about how those in the art, those who are actually building these types of
`machines, will change what they're working on over the years and will move
`from developing the types of machines that are in Brabec, the types of
`machines that are used there is the '395 patent.
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`Case IPR2018-01091
`Patent 8,308,395 B2
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`He also explains how in Caterpillar products that sometimes they
`will develop the leveling types of systems in the context of a grader, and
`then they will be later used in a planer application. We also cited several
`prior art references that go between all of these different types of machines
`that have leveling apparatus and use them interchangeably. So we would
`submit that these are clearly analogous references.
`Going to Slide 23, another argument that Wirtgen makes is that there
`is not sensor failure in the context of machines like Davis. So there is no
`reason that anybody would be making modifications that we're talking
`about. Wirtgen points to a Caterpillar document in support of those
`arguments here. What Wirtgen doesn't get into is how the portions of the
`document citings are actually used.
`The document cited, I have it here, shown on Slide 23, and what that
`document is talking about is a particular diagnostic code. And for that
`particular -- sorry, is there a question, Judge Mayberry?
`JUDGE MAYBERRY: No.
`MR. GOLDBERG: Sorry, I just heard a noise and I wasn't sure.
`So, in that particular diagnostic code, when that comes up the
`document is indicating that the cause of that diagnostic code it's unlikely that
`that's a switch -- I'm sorry. That's all that the document is saying. It is not
`saying that sensors don't fail.
`If we go to Slide 24, we have testimony again from Mr. Netka about
`the failure of sensors. And he is testifying that, yes, as one would expect,
`sensors do sometimes fail. And it's not just certain kinds of sensors fail, but
`he provides a long list of sensors that fail, including the types of laser
`sensors that Wirtgen has brought up are not used on planers, they're not used
`on milling machines.
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`Mr. Netka testified that they are and that they do sometimes fail.
`And moreover, the devices that are in Brabec are not just used indoors, they
`can be used outdoors as well.
`Going to Slide 25, Wirtgen tries to hinge a large portion of its
`arguments on a single sentence in the ’395 Patent. The single sentence --
`and I have it shown on Slide 25 here -- refers to application-related reasons.
`And Wirtgen, using its employee Mr. Schmidt, tries to blow this up into
`some huge analysis spanning multiple pages about what these reasons are,
`and why it is that the sensor changes are required in the ’395 Patent. That is
`all after-the-fact reasoning that's being put forth by their employee.
`Now, application-related reasons, the examples that they set forth are
`things like the curve being something that is showing up, or their expert
`refers to manhole cover, those being some of the reasons why you might
`want to change sensors.
`In Brabec, of course, we have the changing of sensors because the
`sensor fails.
`In all of these, the reason you're changing sensors is because
`whatever sensor you are using is not going to work well for what you are
`continuing to do, whether it's because it failed or it's for some other reason, it
`is a reason that you need to change sensors. That is an application related
`reason.
`And, if we go to Slide 26 here --
`JUDGE CHERRY: And there's no obligation for you to show that
`you would make the change for the same reason as the inventor did right?
`MR. GOLDBERG: That's 100 percent accurate.
`Dr. Wilhelm confirms that there's no discussion in the specification
`about these application-related reasons and exactly what they are. We have
`testimony from Dr. Bevly confirming that application-related reason could
`be a sensor failure.
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`Going to Slide 28, another argument that Wirtgen raises is that we
`wouldn't be doing any of these combinations because nobody would ever
`continue operating the machine if a sensor failed. And, again, they point to
`some Caterpillar literature for this assertion.
`But, if we look at what the document they're pointing to on Slide 28
`actually says, or it's actually talking about, this is not in the context of
`normal operation of the machine. This is in the context of you're doing
`troubleshooting. And, if you're doing troubleshooting and in the context of
`the troubleshooting you're operating the machine and there's an issue, then
`you're going to stop the machine and look at what the diagnostic codes said.
`So, we have testimony going to Slide 29, from Netka again,
`explaining that operators will continue using the machines if there's a failure,
`that he has personally observed this happen. And he explains that one of the
`reasons that this happens is that there's a lot of urgency associated with the
`paving operations for which these machines are used. They need to get to
`the next jobsite. They need to reopen the road in the morning before rush
`hour. There, these are reasons why the machine operators will continue
`using the machine if there's a sensor failure. And they would be able to do
`so once you have the switchover capability that is in the obviousness
`combination that we propose.
`I'm going to Slide 5 -- I'm sorry, Claim 5, Slide 30. There's been
`some confusion about what portion of Brabec Caterpillar is relying on for
`Claim 5. And Wirtgen has tried to make the case that our position is that we
`are going to be using the automatic disclosure of Brabec, and then we are
`going to further modify that to undo the automated nature of it. And then we
`are going to end up back at the manual.
`That is not the combination that we are proposing. Going to Slide 31
`here, for the manual aspects in Claim 5, we have pointed to paragraph 9 of
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`the Brabec reference. As we can see here, that paragraph introduces a
`manual mode. And in that manual mode you can --
`JUDGE CHERRY: Mr. Goldberg.
`MR. GOLDBERG: Yes?
`JUDGE CHERRY: There's one thing that I had, and this is related to
`Claim 5, right, one thing that I had concern about was doesn't Claim 5
`require both a manual and the automatic mode? I guess I was -- if we're
`going to just say that it's a manual mode are we losing the automatic
`functionality that we need for the automatic part of the claim?
`MR. GOLDBERG: So, the first thing I want to point out, Your
`Honor, is that while we have been talking a lot about the automation due to
`the disclosure in Brabec, and that just felt like a natural, easy way to work a
`lot of the claims here, the independent claims don't actually require
`automatic. They could be mapped directly to the manual mode or the
`automatic mode.
`And the key limitations that we're relying on Brabec for, at the end
`of Claim 1 of the ’395 Patent, the switchover, and more specifically the
`very, very last point in there, that without any erratic alteration of at least
`one adjustment value, that is something that, admittedly, in our petition
`when we were talking about Claim 1 we pointed to the automatic mode.
`And then when we went to Claim 5 we talked exclusively about the manual
`mode, and we pointed to paragraph 9, a single paragraph, the only paragraph
`that's actually dealing with this in the Brabec reference.
`Now, the paragraph 9, if we look at the end of the paragraph, and
`you can see that right here on the slide, it says that the operator must make
`these multiple inputs quickly or the inputs may be outside of the required
`tolerance during the transition period.
`So, that is actually indicating that even in the manual mode that you
`would be doing the changeover without any erratic alteration. And that is
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`what we are relying on for Claim 5 to address that and the limitation over in
`Claim 1.
`JUDGE CHERRY: Does that tend to put it onto the operator? I
`mean, here it says the controller has to be configured. Are you saying that
`this indicates that that controller would have to be configured to be able to
`do that even if, even if it's the operator doing it?
`MR. GOLDBERG: No, Your Honor. This is actually a little bit of
`sleight of hand, I think, that Wirtgen has been using in a lot of its arguments.
`If we look at the actual claim language at the end of Claim 1, and
`you look at the beginning of the very last limitation there, it's not just the
`controller. It's the controller and the switchover system that are together in
`Figure 2 have this result. And the switchover system -- and when you go to
`Claim 5, again it's both the controller and the switchover system that
`accomplish this and then it's the manually operatable switchover device
`that's discussed but then maps over to paragraph 9.
`JUDGE MARSCHALL: It's your position that the controller and
`switchover system are two different things? Or are those two words
`describing one system?
`MR. GOLDBERG: So, I'm not sure that I would go as far as to
`require that they be separate or that they be the same. I think that the claim
`in the particular limitation that we are discussing refers to them both. So,
`that it doesn't have to be just a separate controller.
`And in the ’395 Patent they actually provide an example in, in
`column 5 toward the end, starting at lines 45 through 67, and describing
`Figure 7A. Do you see it? That actually is an example where it is an
`operator that is doing it. And, presumably, that is what's providing the
`support for the discussion in Claim 5.
`JUDGE MARSCHALL: Getting back to the issue of which
`embodiment you're relying on, it appears, based on the petition at least, that
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`you're relying on the improvement disclosed in Brabec that involves
`automatic switchover to an alternate sensor; correct? For Claim 1.
`MR. GOLDBERG: For Claim 1 we are, yes.
`JUDGE MARSCHALL: And then for Claim 5, which depends from
`Claim 1, you're relying on the manual approach used in the background of
`Brabec; correct?
`MR. GOLDBERG: That's correct.
`JUDGE MARSCHALL: So, when you read those claims together,
`with respect to Claim 5 you're relying on those two different embodiments;
`correct?
`MR. GOLDBERG: I would disagree with that, Your Honor. The
`reason being that Claim 5, as a dependent claim, of course it incorporates all
`of the limitations of Claim 1. But when we go to Claim 5 we are actually
`providing an alternative mapping that would also apply to Claim 1.
`JUDGE MARSCHALL: I'm not sure that was apparent from the
`petition.
`MR. GOLDBERG: Well, the petition says what it says, Your
`Honor. Our position would be that this is all showing up in paragraph 9 of
`Brabec, which is what we cited. So, this is not some crazy new thing that's
`being sprung on anybody with different citations or different references.
`JUDGE MARSCHALL: Does Brabec itself ever contemplate using
`the improved automatic switchover method in combination with a manual
`override?
`MR. GOLDBERG: I don't think that Brabec clearly says one way or
`the other. At the, at the end of the Brabec description in paragraph 42 it
`does have one of the standard paragraphs that we see in patents where it says
`you can do whatever you want to do.
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`We provided expert testimony relating to this manual mode both in
`the original Bevly declaration -- that's around paragraph 172 -- and then
`followed up with that, too, in the second declaration.
`I want to, I want to just briefly talk about an issue that sort of gets
`under the omitted claims just because it's somewhat related to this that we're
`already talking --
`JUDGE MAYBERRY: Excuse me, counsel.
`MR. GOLDBERG: Yes?
`JUDGE MAYBERRY: And I don't mean to belabor this.
`MR. GOLDBERG: Yes.
`JUDGE MAYBERRY: I just want to make sure I heard you
`correctly, again with Claim 5. Did I understand you to say that as far as how
`you contend the combination renders Claim 5 obvious you rely on the
`element that you tag 1G, Brabec's paragraph 9, as disclosing that subject
`matter as well as the additional subject matter recited in Claim 5 itself?
`MR. GOLDBERG: That's correct, Your Honor.
`JUDGE MAYBERRY: All right, thank you.
`MR. GOLDBERG: Actually, let me change course a little bit. I'm
`going to go to Slide 39. I want to talk about the claim construction issue that
`Wirtgen has raised for a moment.
`They've taken the position that selected subset needs to mean a
`subset of the plurality of selectable sensors purposely chosen for preference
`or a special quality.
`I want to remind Your Honors first that this is an older case and
`we're actually still under broadest reasonable interpretation here. And there
`is no support in the specification to be narrowing the language of the claim
`in the way that Wirtgen suggests.
`And their expert -- this is on Slide 40 -- actually confirmed this
`during his deposition. The only place that this definition is coming from is a
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`dictionary. And the problem is that that dictionary definition is not
`supported by the specification. In contrast, the specification, including the
`claims, actually supports a much broader construction.
`And going to Slide 41, we can see the language from Claims 1 and
`11 and also see language from the specification here. And all that the claims
`are saying is that the switchover form control based upon a first selected
`subset of the plurality of selectable sensors to control based on a second
`selected subset.
`So, our position is that a subset is just something that is chosen for a
`control. There is no reason to start adding all of the additional words that
`Wirtgen is adding.
`We have submitted our own dictionary as well. It's Exhibit 1043 that
`defines "select" to just be to choose or pick. And that, again directly
`corresponds to the definition that we have proposed, together with the fact
`that it's something which is the control which is coming straight from the
`claim language.
`JUDGE CHERRY: To even show infringement based on that
`definition you'd have to show there was some intent and that you -- I don't
`even understand that definition in the context of these.
`MR. GOLDBERG: I don't either.
`JUDGE CHERRY: Well, I'll ask your opposing counsel.
`(Laughter.)
`MR. GOLDBERG: If we look at Slide 42 for a moment, we have
`here experts again from the petition showing the way that we've mapped
`these different sets. The first set in sensors 20 and 22, and then the second
`set going to sensors 20 and 42.
`And even under Wirtgen's definition, going to Slide 23, the Brabec
`reference provides the ability to have all kinds of different sensors. And, of
`course, when somebody is creating a machine they're going to have to
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`decide what sensors exist and how they are used. So, there we would, to the
`extent that anybody can make any sense of their proposed construction, I
`think have the necessary disclosure.
`And going to Slide 44, Dr. Wilhelm also agrees that in Brabec we
`have the different, besides the primary possible sensors, the different sets of
`alternative sensors.
`I want to just quickly hit on one issue for the amended claims. And
`in particular going to Slide 71. Wirtgen has presented an argument that the
`PM-465 manual and the other manual that Cat is relying upon have not been
`shown to be prior art. We have submitted a very significant amount of
`evidence here showing that these are indeed prior art.
`We can start just by looking at the manual on Slide 71 providing
`January 1999 dates. Going to Slide 72, the manual itself says that it should
`be stored on an operator's compartment. So that means it's going to be on
`the customer's side, not something that's being held secret within Caterpillar
`somehow.
`On Slide 73 we have lots of the machines that were shipped to
`customers and, therefore, they would have had the manual in it.
`Slide 74 we have testimony from Mr. Netka about the specific FNLs
`that determine what manuals need to be shipped with what products, and
`confirming that the manual that we're relying upon was indeed shipped with
`various machines.
`Slide 75, additional testimony confirming that the manual would
`have been shipped with the machines.
`Slide 76, testimony that Netka himself personally checked to make
`sure that these manuals were actually in the machines.
`JUDGE MARSCHALL: So it's your position that shipping the
`manuals with the 11 sold products itself is a publication under --
`MR. GOLDBERG: Yes.
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`JUDGE MARSCHALL: And is there a case that you had in mind,
`case law that is most factually similar to your situation here with manuals
`shipped with product being deemed a printed publication?
`MR. GOLDBERG: I don't have a case off the top of my head, Your
`Honor. I would -- the way that I kind of think about it is when you're
`shipping a manual with a machine, in a sense you just have a gigantic thing
`and there are some pages within it that you can look at, and those are the
`reference. So, the fact that the manual is in the machine and the machine is
`shipped would show that all of it is prior art.
`There's also separate evidence in the record that the manuals were
`available through dealers if people wanted to get them by themselves as
`opposed to getting it with a machine attached to it in a sense.
`JUDGE CHERRY: Does it restrict the manuals in any way?
`MR. GOLDBERG: No, it does not.
`JUDGE MARSCHALL: And these machines are used in public,
`correct?
`MR. GOLDBERG: Yes.
`JUDGE MARSCHALL: