UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CATERPILLAR INC.
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`Petitioner
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`V.
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`Patent Owner
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`WTRTGEN AMERICA, INC.
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`PATENT OWNER’S NOTICE OF CROSS-APPEAL
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`Via PTAB EZE
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`Patent Trial and Appeal Board
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`via Hand Carry
`Director of the United States Patent and Trademark Office
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`c/o Office of the General Counsel, 10B20
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`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
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`via CM/ECF
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`United States Court of Appeals for the Federal Circuit
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`
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`Notice is hereby given, under 35 U.S.C. §§ 141(c), 142, 319; 37 CPR. §§
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`90.2(a), 90.3 (a), and Federal Rules of Appellate Procedure/Federal Circuit Rule
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`4(a)(3), that Patent Owner Wirtgen America, Inc. hereby cross appeals to the
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`United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision entered on July 11, 2019 (Paper No. 49),1 and from all underlying
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`findings, orders, decisions, determinations, rulings, and opinions adverse to Patent
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`Owner, inlcuding, without limitation, the “Decision Instituting Inter Partes
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`Review” entered on May 3, 2018 (Paper No. 7).
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`Under 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that the issues on
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`appeal may include, but are not limited to:
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`1. whether the Board erred in finding claims 1—3, 5—9, 14—16, 21—23, 26—28,
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`and 33—35 of US. Patent No. 7,828,309 unpatentable as obvious under 35
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`U.S.C. § 103 over the combination of Swisher and Neumeier, including the
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`Board’s determination that Petitioner met its burden to show unpatentability
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`by a preponderance of the evidence, and any finding or determination
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`supporting or related to this issue;
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`1 A public version of the Revised Final Written Decision was entered on July
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`17, 2019 (Paper No.51).
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`2. whether the Board erred in finding that Neumeier disclosed independent
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`individual movement of its hydraulic cylinders, contrary to Neumeier’s
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`disclosure and both experts’ testimony;
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`3. whether the Board erred in failing to properly consider evidence proving that
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`a person of ordinary skill in the art would not have combined Swisher and
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`Neumeier;
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`4. whether the Board erred in failing to adequately address Patent Owner’s
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`arguments that the proposed modification renders Swisher inoperable for its
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`intended purpose;
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`5. whether the Board erred in failing to properly consider evidence of objective
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`indicia of non-obviousness;
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`6. whether the Board erred in finding claims 11—13, 24, and 36 of the ’309
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`patent unpatentable as obvious under 35 U.S.C. § 103 over the combination
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`of Swisher, Neumeier, and Frey, including the Board’s determination that
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`Petitioner met its burden to show unpatentability by a preponderance of the
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`evidence, and any finding or determination supporting or related to this
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`issue;
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`7. whether the Board erred in failing to adequately explain why it credited
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`Petitioner’s arguments with respect to claims 11—13, 24, and 36 and why it
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`found claims 11—13, 24, and ~36 unpatentable;
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`8. whether the Board violated the Administrative Procedure Act by any of the
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`foregoing errors; and
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`9. any finding or determination supporting or related to the aforementioned
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`issues as well as all other issues decided adversely to Patent Owner in any
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`order, decision, ruling, phone conference decision, or opinion. ~
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`Simultaneously with this submission, Patent Owner is filing a true and
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`correct copy of this Notice of Cross-Appeal with the Director of the United States
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`Patent and Trademark Office and a true and correct copy of the same, along with
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`the required docketing fee, with the Clerk of the United States Court of Appeals for
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`the Federal Circuit as set forth in the accompanying Certificate of Filing.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
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`/ R. Wilson Powers III/
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`Ralph W. Powers III, Reg. No. 63,504
`Lead Counsel for Patent Owner
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`Date: August 28, 2019
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`1100 New York Avenue, NW.
`Washington, DC. 20005
`(202) 371-2600
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`
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`CERTIFICATION OF FILING
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`The undersigned hereby certifies that, in addition to being electronically
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`filed through PTAB EZE, a true and correct copy of the above-captioned PATENT
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`OWNER’S NOTICE OF CROSS-APPEAL is being filed by hand with the
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`Director on August 28, 2019 at the following address:
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`Director of the United States Patent and Trademark Office
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`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
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`The undersigned also hereby certifies that a true and correct copy of the
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`above-captioned PATENT OWNER’S NOTICE OF CROSS-APPEAL and the
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`filing fee is being filed via CM/ECF with the Clerk’s Office of the United States
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`Court of Appeals for the Federal Circuit on August 28, 2019.
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
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`/ R. Wilson Powers III /
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`Ralph W. Powers III, Reg. No. 63,504
`Lead Counsel for Patent Owner
`
`Date: August 28, 2019
`
`1100 New York Avenue, NW.
`Washington, DC. 20005
`(202) 371-2600
`
`
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`CERTIFICATION OF SERVICE
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`Case IPR2017-02185
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`US. Patent 7,828,309
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`NOTICE OF CROSS-APPEAL was served electronically via e-mail on August
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`28, 2019, in their entirety on the following:
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`Joshua L. Goldberg (Lead Counsel)
`James R. Barney (Back-up Counsel)
`David K. Mroz (Back-up Counsel)
`Jason L. Romrell (Back-up Counsel)
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joshua.goldberg@finnegan.com
`james.barney@finnegan.com
`david.mroz@finnegan.com
`jason.romrell@finnegan.com
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
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`/ R. Wilson Powers 111 /
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`Ralph W. Powers HI, Reg. No. 63,504
`Lead Counsel for Patent Owner
`
`Date: August 28, 2019
`1100 New York Avenue, NW.
`Washington, DC. 20005
`(202) 371—2600
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`137|3004_l
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`
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`FORM 5. Petition for Review or Notice of Appeal of an Order or Decision of an AGENCY, BOARD,
`'COMMISSION, OFFICE OR BUREAU
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`Form 5
`Rev. 03/16
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`Wirtgen America, Inc.
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`Petitioner or Appellant,
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`PETITION FOR REVIEW
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`Caterpillar 1m
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`Respondent or Appellee.
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`(Address, phone number and e-mail of petitioner, appellant or attorney)
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`Wirtgen America, Inc.
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`(name all parties* bringing the petition or‘appeal)
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`hereby petition/appeal the court for review of the Final Written DeciSion. Paper49. 1PR2017-02185 (describe
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`the order or decision and include decision number) of the Patent Trial and Appeal Board
`(name the agency, board, office or bureau) entered on Jul 11, 2019
`(date).
`The order or decision was received on Jul 11, 2019
`(date).
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`Date" Aug 28 2019
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`/5/ Ralph W. Powers
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`(Signature of petitioner, appellant
`or attorney)
`1100 New York Ave NW.
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`Washington, DC. 20005
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`(202) 371-2600
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`tpowers@sternekessler.com
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`*See Fed. R. App. P. 15 (a) (2) for permissible ways of identifying petitioners.
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