Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: May 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`
`Petitioner,
`
`V.
`
`WIRTGEN AMERICA, INC.,
`
`P atent Owner.
`
`Case IPR2017-021 86
`
`Patent 9,624,628 B2
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative PatentJudges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`35 U.S.C. § 314(a).
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`

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`IPR2017-02186
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`Patent 9,624,628 B2
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`A. Background
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`1.
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`INTRODUCTION
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`Caterpillar, Inc. (“Petitioner”) filed a Petition to institute an inter
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`partes review of claims 1, 2, 5, 6, 9—22, and 27—29 of US. Patent No.
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`9,624,628 B2 (“the ’628 patent”). Paper 1 (“Pet”). Wirtgen America Inc.
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`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim Resp”).
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`Under 35 U. S.C. § 314, an interpartes review may not be instituted
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`“unless .
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`.
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`. there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). The Board considers the Petition on behalf of the Director.
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`37 C.F.R. § 42.4(a).
`
`On April 24, 2018, the Supreme Court held that, if an interpartes
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`review is instituted, a final written decision under 35 U.S.C. § 3 18(a) must
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`decide the patentability of all claims challenged in the petition. SAS Inst,
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`Inc. v. Iancu, 2018 WL 1914661, at *10 (US. Apr. 24, 2018). The only
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`exception identified in the SAS decision is when “a patent owner may move
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`to ‘[c]ancel any challenged patent claim’ during the course of an inter partes
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`review, effectively conceding one part of a petitioner’s challenge.” Id. at *7
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`(citing [35 U. S.C.] § 316(d)(1)(A)). The Supreme Court recognized that
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`“[n]aturally, then, the claims challenged ‘in the petition’ will not always
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`survive to the end of the case.” 1d.
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`Upon considering the Petition, Preliminary Response, and the
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`evidence of record, we determine that Petitioner has shown a reasonable
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`likelihood that it would prevail with respect to at least claim 1 of the
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`challenged claims. Accordingly, we institute an interpartes review of all
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`the challenged claims, claims 1, 2, 5, 6, 9—22, and 27—29, as set out in the
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`Order included with this Decision.
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`

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`IPR2017—02186
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`Patent 9,624,628 B2
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`B. Additional Proceedings
`
`The parties indicate that the ’628 patent is currently being asserted by
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`Wirtgen America, Inc. against Caterpillar in several other proceedings,
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`namely, Wz'rtgen America, Inc. v. CaterpillarProdotti Stradalz' S. r.L. et al.,
`
`Civ. No. 0:17-cv-02085 in the United States District Court for the District of
`
`Minnesota, which Petitioner indicates is currently stayed pending resolution
`
`of ITC Investigation No. 337-TA—1067, entitled “Road Milling Machines
`. and Components Thereof" (USITC, filed July 19, 2017), and also in Wirtgen
`America, Inc. v. Caterpillar, Inc. , Civ. No. 1:17-cv-00770 in the United
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`States District Court for the District of Delaware. Pet. 86—87, Paper 4, 2—3.
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`C. The ’628 Patent
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`The ’628 patent (Ex. 1001), titled “Auxiliary Drive,” describes a
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`roadway construction machine such as a cold milling device having a
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`milling drum for scarifying a road surface. Ex. 1001, 1:26—39. The milling
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`drum is equipped with exchangeable tools on its outer surface, and these
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`tools need to be replaced from time-to-time due to wear and breakage. Id. at
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`1:39—44. Figure 2 of the ’628 patent is reproduced below.
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`

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`IPR2017-02186
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`Patent 9,624,628 B2
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`
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`Figure 2 of the ’628 patent, above, depicts drive motor 6 powering drum 8
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`via belt drive 16 and reduction gear 25. Exchangeable tools 14, for engaging
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`a ground surface, are shown on the external surface ofdrum 8.
`The ’628 patent describes that during, or after, milling operations the
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`tools may have to be replaced. Id. Upon raising drum 8 away from the
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`ground surface an auxiliary drive 20 (shown alternatively in Figure 2 as 20’
`and 20’ ’), “can be coupled to the drive line to rotate the work roller in its
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`raised condition by a predetermined or selectable rotational angle.” Id. at
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`2:5—7. The auxiliary drive provides torque delivering a more accurate and
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`safe rotation of the drum during maintenance as compared to drive motor 6,
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`in order to “rotate the work roller by a small rotational angle to bring not yet
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`exchanged tools into a more convenient mounting position.” Id. at 2:11—13.
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`The ’628 patent explains that “[d]uring this period, the drive motor for the
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`work roller is out of operation or decoupled.” Id. at 2:19—20.
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`IPR2017—02186
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`Patent 9,624,628 B2
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`D. Illustrative Claim
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`Of the challenged claims, claims 1, 15, and 21 are independent. Each
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`of dependent claims 2, 5, 6, 9-14 depend directly from claim 1, claims 16—
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`2O depend directly from claim 15, and claims 22 and 27—29 depend directly
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`from claim 21. Claim 1 illustrates the claimed subject matter and is
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`reproduced below:
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`1. A construction machine for the treatment of ground surfaces,
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`comprising:
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`a machine frame;
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`a work drum supported from the machine frame and including
`exchangeable tools fastened to the work drum;
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`a drive line including a work motor and a transmission
`connecting the work motor
`to the work drum,
`the
`transmission including:
`
`a belt drive including a motor-side pulley, a drum-side pulley,
`and at least one drive belt connecting the motor—side pulley to
`the drum-side pulley; and
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`a reduction gear arranged internally of the work drum and
`connected to the drum—side pulley; and
`
`an auxiliary drive mounted at a location on the construction
`machine and including an auxiliary drive motor, the auxiliary
`drive having a first configuration in which the auxiliary drive
`motor is coupled to the work drum via at least a portion ofthe
`transmission to rotate the work drum, the auxiliary drive
`having a second configuration in which the auxiliary drive
`remains mounted at the location on the construction machine
`and the work drum can be rotated by the work motor.
`
`Ex. 1001, 6:6-28. Independent claim 15 is a similar apparatus claims and
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`includes the further limitations of “a drive coupling” and “a pump distributor
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`drive.” Id. at 7:21—53. Independent claim 21 is a method claim, and instead
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`of the auxiliary drive having a first and a second “configuration,” recites the
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`

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`IPR20 1 7-02186
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`Patent 9,624,628 B2
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`work drum having “a first rotational speed,” and “a second rotational speed
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`less than the first rotational speed.” Id at 827—32.
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`E. The Alleged Grounds ofUnpatentability
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`Petitioner contends that the challenged claims are unpatentable on the
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`following specific grounds.I
`
`References
`Haehn2 and Smith3
`
`Haehn, Smith, and Jakob4
`Haehn, Smith, Jakob, and
`Godbersen5
`Haehn, Smith, and Stroh6
`
`Claims Challened
`
`§ 103
`
`1, 2, 9,10,13, 21, 22, 27,
`and 29
`p—d O U)l
`O\ , 15,19, and 20
`,_. O D)
`
`60°
`COO
`
`Haehn, Smith, Jakob, Godbersen,
`and Stroh
`Haehn, Smith, Jakob, Godbersen,
`and Stroh
`
`§ 103
`
`17
`
`§ 103
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`
`
`
`
`
`
`
`F. The Level ofOrdinary Skill in the Art
`
`Factors pertinent to a determination of the level of ordinary skill in the
`
`art include: (1) educational level of the inventor; (2) type of problems
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`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication of the technology, and
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`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`
`‘ Petitioner supports its challenge with the opinion testimony of Lee A.
`Horton, P.E. (Ex. 1010). See infra.
`2 Ex. 1003, US. PatentNo. 5,893,677 (Apr. 13, 1999).
`3 Ex. 1004, GB 2060794 B, App’l. No. 8032569 (Pub. May 7, 1981).
`4 Ex. 1005, US. PatentNo. 4,193,636 (Mar. 18, 1980).
`5 Ex. 1006, US. PatentNo. 4,343,513 (Aug. 10, 1982).
`6 Ex. 1007, US. PatentNo. 4,929,121 (May 29, 1990).
`7 Ex. 1009, US Patent No. 6,1 12,139 (Aug. 29, 2000).
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`IPR2017-02186
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`Patent 9,624,628 B2
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`Union Oil C0., 713 F.2d 693, 696—697 (Fed. Cir. 1983) (citing Orthopedic
`
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381—82
`
`(Fed.Cir.1983)). Not all such factors may be present in every case, and one
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`or more of these or other factors may predominate in a particular case. Id.
`
`Moreover, these factors are not exhaustive but are merely a guide to
`
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`
`Inc. v. Apotex,1nc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`In determining a level of ordinary skill, we also may look to the prior
`
`art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
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`Additionally, the Supreme Court informs us that “[a] person of ordinary skill
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`is also a person of ordinary creativity, not an automaton.” KSR Int ’1 v.
`
`Teleflex Inc., 550 US. 398, 421 (2007).
`
`Petitioner asserts that “a person of ordinary skill in the art for the ’628
`
`patent would have 1) a bachelor’s degree in mechanical engineering or an
`
`equivalent degree, and two to five years of experience working on mobile
`construction machine design, or 2) seven to ten years of experience working
`on mobile construction machine design.” Pet. 12 (citing Ex. 1010 11 18).
`
`Patent Owner does not expressly disagree with Petitioner’s position nor
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`substantively address the level of ordinary skill in the art in its Preliminary
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`Response.
`Although neither party provides a detailed analysis addressing the
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`factors described above, the prior art reflects a knowledge of mechanical
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`engineering, mobile road-building equipment systems, large-sized milling
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`equipment, power transmission systems, mechanical drive systems,
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`electronics and/or hydraulic control systems. See e. g., Ex. 1001, 1:26—62;
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`Ex. 1003, 1:4—41; Ex. 1004, 1—2. For purposes ofthis Decision, and in
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`accordance with the prior art and the obviousness challenges presented by
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`IPR2017-02186
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`Patent 9,624,628 B2
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`Petitioner we determine that the level of ordinary skill in the art includes a
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`person having a bachelor’s degree in mechanical engineering or an
`
`equivalent degree, and two to five years of experience working on mobile
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`construction machine design, or an equivalent balance of education and
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`work experience in design and construction of mobile construction
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`machines.
`
`II.
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`CLAIM CONSTRUCTION
`
`A. Legal Standard
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`In an interpartes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. §42.100(b);
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`Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016)
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`(upholding the use of the broadest reasonable interpretation standard).
`
`“Under a broadest reasonable interpretation, words of the claim must
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`be given their plain meaning, unless such meaning is inconsistent with the
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`specification and prosecution history.” Trz'vascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). Ifthe specification “reveal[s] a special
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`definition given to a claim term by the patentee that differs from the
`
`meaning it would otherwise possess[,] .
`
`.
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`. the inventor’s lexicography
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`governs.” Phillips v. A WHCorp. , 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002)). We apply this standard to the claims of the ’628 patent.
`
`B. AuxiliaryD/‘lve
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`Petitioner asserts that no claim construction of any term is required.
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`Pet. 13. Patent Owner, on the other hand, contends that “auxiliary drive,” as
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`recited in for example in claim 1, “must be independently powered,” i.e.
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`“not powered by the main engine.” Prelim. Resp. 6.
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`IPR2017-02186
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`Patent 9,624,628 B2
`We note initially that this proposed construction is directed really to
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`how the auxiliary drive is powered, rather than what it is. Patent Owner
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`points out that the plain and ordinary meaning of “auxiliary” is “used as a
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`substitute or reserve in case of need.” Id. at 7 (citing Ex. 1007). Patent
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`Owner argues, however, that this definition does not give a full and accurate
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`meaning in light of the specification of the ’628 patent. Id. In support of its
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`claim construction, Patent Owner relies up an explanation in the
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`Specification allegedly describing inoperability of the main drive motor
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`when the auxiliary drive is employed, i.e., when the auxiliary motor is
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`operating “the drive motor for the work roller is out ofoperatz'on or
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`decoupled.” Id. (citing Ex. 1001, 2:19—20)(emphases added).
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`We are not persuaded at this point in the proceeding that the claims
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`require that the claimed “auxiliary drive” must be “independently” powered.
`Nowhere in the specification or claims does Patent Owner show that the
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`word “independently” describes power to the auxiliary drive. Patent Owner
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`does not point to, nor can we find in the specification any evidence of an
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`express control, or power, relationship betweenthe drive motor and
`auxiliary motor. To the extent Patent Owner points to Caterpillar’ 3 use of
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`“independent unit” to describe the auxiliary drive in EP2322718, this
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`description appears to relate to the mechanical coupling of the auxiliary
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`drive unit to the drive train and work drum transmission, not how the
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`auxiliary unit is powered. Prelim. Resp. 11—12 (citing Ex. 2010, [0004]—
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`[0005]).
`We also find no specific disavowal in the Specification that the drive
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`motor cannot power the auxiliary drive. The ’628 patent explains that the
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`auxiliary drive “preferably” can be an electric, hydraulic, or pneumatic
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`motor. See Ex. 1001, 3 :29—35, 5 :3 5—48. Indeed, even if we assume an
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`IPR2017-02186
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`Patent 9,624,628 B2
`embodiment where the drive motor “is out of operation” and not powering
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`the auxiliary drive, the phrase in the written description relied upon by
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`Patent Owner states also an alternative, where the drive motor is simply
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`“decoupled” from the transmission. It is entirely understandable to a person
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`of ordinary skill in the art that an electrically powered auxiliary motor, or a
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`hydraulic or pneumatic operated auxiliary motor, is still driven, indirectly,
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`via an alternator/generator or a pump powered by the drive motor, even
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`though the drive motor is decoupled, and not influencing the drive line. See
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`Ex. 1001, 3:29—35, 5:35—48, 4:14—18, see also Ex. 1010 1118.
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`In the proposed construction, Patent Owner’ 5 implicit interpretation of
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`“decoupled” in the written description, assumes a complete separation, e.g.,
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`total mechanical, hydraulic, and electrical, etc., separation, ofthe main drive
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`motor from both the work drum and the auxiliary motor. See Prelim.
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`Resp. 7—8 (“Because the drive motor is out of operation or decoupled when
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`the auxiliary drive is rotating the work roller the claimed auxiliary drive
`
`must be independently powered”). The Specification however, read in
`context, uses the term “coupled” and “decoupled” to describe the mechanical
`
`transmission connection between the auxiliary drive and the work drum, not
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`necessarily, if at all, a power connection between the drive motor and the
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`auxiliary motor. See Ex. 1001 2:6—6 (“[A]n auxiliary drive can be coupled
`to the drive line to rotate the work roller.”). Indeed, the related paragraphs
`
`and technical discussion relating to the sentence referred to by Patent Owner
`
`to support this position, are reasonably understood as directed to the
`mechanical drive line transmission between the drive motor, auxiliary motor
`
`and the work roller. See id. at 224—65. (The ’628 patent describes for
`
`example “that the motor-side pulley of the belt drive can be decoupled from
`
`the drive motor by means of a coupling unit”).
`
`10
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`IPR2017—02186
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`Patent 9,624,628 B2
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`We appreciate that it is an important aspect of the invention to rotate
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`the work drum by use of the auxiliary motor for safety reasons and to more
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`accurately control rotation for tool replacement procedures. Id. at 1:59—62.
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`What we do not find anywhere in the specification or claims is persuasive
`
`evidence supporting the assertion that the auxiliary drive is limited to being
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`“independent” of and “not powered by the main engine,” as Patent Owner
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`proposes. For instance, the ’628 patent states that an electric auxiliary drive
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`“can be powered by a generator.” 101. at 5:37. However, something has to
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`power, e. g., provide mechanical rotation, to the generator to produce
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`electricity. A person of ordinary skill in the art would understand that the
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`main drive motor, even decoupled from the work drum transmission, is one
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`option for powering the generator.
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`Consequently, for the purpose ofthis Decision, under the broadest
`
`reasonable interpretation, we are not persuaded that “auxiliary drive” should
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`be construed as anything other than its plain and ordinary meaning as would
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`have been understood by those of ordinary skill in the art.
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`C. Other Constructions
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`Patent Owner asserts also that Petitioner’s construction of “coupled”
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`in the ITC proceedingis in conflict with its challenges in this proceeding.
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`See Prelim. Resp. 43—46. Patent Owner, however, advances no claim
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`construction of its own for this claim term. See id. In addition, our rules do
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`not require positions consistent with related cases in different fora. Our
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`rules require that the parties identify related matters. 37 C.F.R. § 42.8(b)(2).
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`Various reasons may justify inconsistencies among fora, including differing
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`legal or evidentiary standards, a change in litigation strategy, or a change in
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`position.
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`11
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`IPR2017-02186
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`Patent 9,624,628 B2
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`We remind the parties that our claim construction determinations in a
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`decision on institution are preliminary in nature. See Trz’ Vascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]he Board is not bound
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`by any findings made in its Institution Decision. At that point, the Board is
`
`considering the matter preliminarily without the benefit of a full record. The
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`Board is free to change its View of the merits after further development of
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`the record, and should do so if convinced its initial inclinations were
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`wrong”). Therefore, the parties are free in their respective briefs to
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`advocate different positions than what we have preliminarily adopted here.
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`111. ANALYSIS
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`We turn now to Petitioner’s asserted grounds of unpatentability and
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`Patent Owner’s arguments in its Preliminary Response to determine whether
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`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
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`A. The Legal Constructs ofObviousness
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`Section 103(a) forbids issuance of a patent when “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int ’1 Co. v. Teleflex Inc. , 550 U. S. 398, 406
`
`(2007).
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`The question of obviousness is resolved on the basis of underlying
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`factual determinations, including:
`
`(1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) when available, evidence
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`such as commercial success, long-felt but unsolved needs, and failure of
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`others. Graham v. John Deere C0., 383 US 1, 17—1 8 (1966); see KSR, 550
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`US at 407 (“While the sequence ofthese questions might be reordered in
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`Patent 9,624,628 B2
`any particular case, the [Graham] factors continue to define the inquiry that
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`controls”). The Court in Graham explained that these factual inquiries
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`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
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`question upon which there is likely to be uniformity of thought in every
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`given factual context.” Graham, 383 U.S. at 18.
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`The Supreme Court made clear that we apply “an expansive and
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`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
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`Whether a patent claiming the combination of prior art elements would have
`
`been obvious is determined by whether the improvement is more than the
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`predictable use of prior art elements according to their established functions.
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`Id. at 417. To reach this conclusion, however, it is not enough to show
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`merely that the prior art includes separate references covering each separate
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`limitation in a challenged claim. Unigene Labs, Inc. v. Apotex, Inc., 655
`
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
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`that a person of ordinary skill at the time of the invention “would have
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`selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention.” Id.
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`Moreover, in determining the differences between the prior art and the
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`claims, the question under 35 U.S.C. § 103 is not whether the differences
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`themselves would have been obvious, but whether the claimed invention as a
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`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
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`Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`
`obviousness”) (citation omitted); see also Stratoflex, Inc. v. Aeroquz'p Corp.,
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`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`
`§ 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham,
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`13
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`Patent 9,624,628 B2
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`is but an aid in reaching the ultimate determination of whether the claimed
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`invention as a whole would have been obvious”) (citation omitted).
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`“A reference must be considered for everything it teaches by way of
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`technology and is not limited to the particular invention it is describing and
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`attempting to protect.” E WP Corp. v. Reliance Universal Inc. , 755 F.2d 898,
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`907 (Fed. Cir. 1985).
`
`As a factfmder, we also must be aware “of the distortion caused by
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`hindsight bias and must be cautious of arguments reliant upon ex post
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`reasoning.” KSR, 5 50 U. S. at 421. This does not deny us, however,
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`“recourse to common sense” or to that which the prior art teaches. Id.
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`Against this general background, we consider the references, other
`
`evidence, and arguments on which the parties rely.
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`B. Claims I, 2, 9, 10, 13, 21, 22, 27, and29—Allegea'0bviousness
`
`over Haehn and Smith
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`Petitioner asserts that claims 1, 2, 9, 10, 13, 21, 22, 27, and 29 would
`have been obvious over Haehn and Smith. Pet. 28—53. Petitioner has
`
`established a reasonable likelihood of prevailing on its assertion that claims
`
`1, 2, 9, 10, 13, 21, 22, 27, and 29 are obvious for the reasons explained
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`below.
`
`I . Haehn
`
`Haehn discloses “an automotive working machine for the treatment of
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`roadways.” Ex. 1003 124—5. The road working machine includes frame 1
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`supporting working drum 8 and internal combustion engine 9 provides
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`power to rotate the working drum via belt drive 10 as shown below in
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`Figures 2 and 4 of Haehn.
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`14
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`IPR2017-02186
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`Patent 9,624,628 B2
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`Haehn’s Figure 2 illustrates a partial side
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`View of a road working machine
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`and certain belt
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`-drive power transmission components.
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`.‘m..“n.‘‘‘.‘‘“...“m..“.__..
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`15
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`As shown in Figure 4 of Haehn, above, Belt drive 10 drives a reduction gear
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`11 within working drum 8. Haehn explains further that the working drum is
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`provided with cutting tools and that “the connection between the cutting
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`tools and the working drum is accomplished by a tool holder fixedly
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`arranged on the working drum.” Id. at 5 :39—42.
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`2. Smith
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`Smith discloses a mining machine including a rotary cutting disc
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`“provided with a plurality of picks each releasably located in, and projecting
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`from, a pick box, a plurality of which boxes are welded to the cutting disc at
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`various locations.” Ex. 1004, 1. Smith explains that these picks often need
`
`to be replaced, and that during such replacement operations, “a secondary,
`
`hydraulic motor [is] operable to rotate the cutting disc at slow speed when
`
`mineral cutting operations are not being effected.” Id. at 2.
`
`Smith illustrates, in annotated Figures 4 and 5 below, an embodiment
`
`of a transmission having alternative drive lines shown highlighted in yellow.
`
`
`
`Figure 4 of Smith, above, depicts in part a transmission with primary drive
`line 30 highlighted in yellow, a main motor unit (not shown) driving input
`
`16
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`IPR2017-02186
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`Patent 9,624,628 B2
`shaft 19 which, via clutch 28, drives pinion 27 on output shaft 20 to turn the
`
`rotary cutting disc during mineral cutting operations. Id. at 11.
`
`
`
`Smith’s annotated Figure 5, above, depicts a secondary drive line of the
`
`transmission with main motor unit (not shown) driving input shaft 19, and
`
`with clutch 28 not engaged with either pinion 26 or 27, so that input shaft 19
`
`drives, directly, only hydraulic pump 23. Id. at 11—12. Smith explains that
`
`the primary drive line in Figure 4 is for mineral cutting operations, whereas
`
`the secondary drive line illustrated in Figure 5, “[t]his slow drive condition
`
`is employed for pick inspection/replacement.” Id.
`
`3. Claim 1
`
`Petitioner contends that Haehn discloses a roadway construction
`
`machine for treating ground surfaces including “machine frame 1,”
`
`supporting “work drum 8” having “exchange holders 16” for receiving
`
`“cutting tools 17.” Pet. 30—32 (citing Ex. 1003, 126—10, 5:66—6 :2, 6:24—33,
`
`7:30—36, 46—51;Ex. 1010 7781—82, 84—86). Petitioner points to Haehn’s
`Figure 2, reproduced below with Petitioner’s annotations, as disclosing “a
`
`17
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`IPR2017-02186
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`Patent 9,624,628 B2
`drive line including and a transmission connecting the work motor to the
`
`work drum” as recited for in claim 1. 1d. at 33—34.
`
`
`
`Figure 2 of Haehn as annotated by Petitioner, above, illustrates a portion of a
`roadway machine including working drum 8, engine 9 and belt drive 10.
`
`According to Petitioner, Haehn discloses belt drive 10 driving reduction gear
`
`11 located internally of, and rotating, working drum 8. Id. at 34 (citing
`
`Ex. 1003, Fig. 4).
`
`Petitioner asserts that Smith, a ground cutting machine for mining
`
`operations, includes similar components including cutting disc 9 having “‘a
`plurality of picks each rele'asably located in .
`.
`. a pick box .
`.
`. welded to the
`cutting disc.’” Pet. 37 (citing Ex. 1004, 124—10; Ex. 1010 11 100). Petitioner
`points out that Smith addresses the specific issue of controlling the cutting
`disc during maintenance operations using a specific, secondary, hydraulic
`
`motor to controllably rotate the cutting disc. Id. at 38 (citing Ex. 1004,
`
`1:10—18, 2:8—18). As discussed above, Smith describes a primary drive line
`
`for rotating cutting disc 9. See Ex. 1004, Fig. 4. Figure 5 of Smith,
`
`18
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`IPR2017-02186
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`Patent 9,624,628 B2
`Petitioner argues, teaches an auxiliary drive with secondary hydraulic drive
`
`motor 31 that “enables ‘the disc [to] be brought, with precision, to the
`
`required angular location for optimum pick inspection/changing.” Id. at 39
`
`(citing Ex. 1007, 11:20-25, 13:13—20).
`
`Petitioner, relying upon its declarant, Mr. Lee Horton, for evidentiary
`
`support, argues that a person of ordinary skill in the art “would have found it
`
`obvious to implement Smith ’s auxiliary drive on Haehn ’s road mill” in order
`
`to bring the work drum, “with precision, to the required angular location for
`
`optimum pick inspection/changing.” Id. (citing Ex. 1007, 11:20—25, 13:13—
`
`20; Ex. 1010 11 104). Mr. Horton states that this is so, because “Haehn
`
`explains that the tools on the work drum require periodic replacement, and
`
`Smith explicitly teaches that the auxiliary drive can be used to carefully
`
`rotate the drum “for optimum pick inspection/changing.” Ex. 1010 11 104
`
`(citing Ex. 1003, 7:30—36; Ex. 1004, 11:20—25, 13:13—20).
`
`Patent Owner argues that Petitioner’s obviousness arguments fail
`
`mainly because “Smith’s purported auxiliary drive: (1) is not independently
`powered; and (2) cannot work in a “switched-offor decoupled state of the
`work motor.” Prelim. Resp. 13. We agree to an extent with Patent Owner’s
`
`assertion that “Smith’s main engine (i.e., electric motor unit 6) powers each
`
`drive mode.” Id. at 18. However, as discussed in our claim construction,
`
`we did not determine that the claimed “auxiliary drive” is limited to being
`
`independently powered. See Section 11B. Also, we understand that a
`“decoupled” main drive motor, as described in the specification of the ’628
`
`patent, could still, in light of the claim language, at least indirectly, power an
`
`auxiliary drive motor. See id.
`
`Patent Owner contends further that Petitioner has not explained how
`
`to implement a secondary drive in Haehn. Prelim. Resp. 3. True, Petitioner
`
`19
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`IPR2017-02186
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`Patent 9,624,628 B2
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`does not explicitly provide a design-level technical explanation of
`
`transmission construction integrating specific components of each reference.
`
`Our rules, however, do not require an instruction manual on how to
`
`physically incorporate or combine the disclosures of two references. As
`
`KSR informs us, “in many cases a person of ordinary skill will be able to fit
`
`the teachings of multiple patents together like pieces of a puzzle.” KSR, 550
`
`US. at 420. Additionally, Mr. Horton states that a person of ordinary skill
`
`in the art would have been able to configure Haehn’s transmission with
`
`Smith’s auxiliary drive including, “the dog clutch element 28 and the
`
`connector 33 slide axially along the output shaft to change the auxiliary
`
`drive between the first and second drive configurations.” See Ex. 1010
`
`1] 108. Indeed, Patent Owner does not argue, or present substantive
`
`evidence, that this mechanical application, i.e. incorporating Smith’s
`
`secondary hydraulic drive into Haehn’s road working machine and belt drive ,
`
`transmission is somehow beyond the level of ordinary skill in the art.
`
`We are persuaded on the evidence presented at this point in the
`
`proceeding that Petitioner has provided the necessary articulated reasoning
`
`supported by evidentiary underpinnings to support the combination of Haehn
`and Smith and the challenge to claim 1. We are persuaded also, at least in
`
`part by the presently unrebutted testimony ofMr. Horton, that these
`
`references, taken together, would have been understood by a person of
`
`ordinary skill in the art to teach all the limitations of claim 1 including a first
`
`configuration having an auxiliary drive motor “to rotate the work drum,” and
`
`a second configuration where “the work drum can be rotated by the work
`
`motor.” Ex. 1001, 6:20—28.
`
`20
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`IPR2017-02186
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`Patent 9,624,628 B2
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`C. Objective Indicz'a
`
`Patent Owner argues that the Petition is “deficient” because “it does
`
`not even mention objective indicia of non-obviousness.” Prelim. Resp. 46—
`
`50. Patent Owner cites to its complaint before the ITC to establish objective
`
`indicia. Id. at 47 (citing Ex. 2002 11 61). The cited paragraph from the ITC
`
`complaint is merely an argument unsupported by persuasive evidence. On
`
`the record before us, there is no evidence of any objective indicia of
`
`nonobvious in this proceeding. Thus, there is no such evidence to support
`
`patentability, and there is no such evidence for Petitioner to rebut or
`
`otherwise address. IfP atent Owner introduces such evidence in its
`
`Response, Petitioner will have an opportunity to address the evidence in its
`
`Reply.
`
`IV.
`
`SUMMARY
`
`For the reasons expressed above, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of showing that at least claim 1 among
`
`the challenged claims is unpatentable. As set out in the Order below, we
`exercise our discretion and institute interpartes review of all challenged
`
`claims on all alleged grounds. 37 C.F.R. § 42.108. In accordance with SAS
`
`and the Director’s guidance, we institute a trial on all challenged claims and
`
`all asserted grounds of unpatentability.
`
`Our review of the Petition under 3 5 U. 8.0 § 314 is not to determine
`
`whether an individual asserted fact is indisputable or whether a
`
`preponderance ofthe evidence supports Petitioner. Our review is to
`determine whether the totality of the information presented in the Petition
`
`and Preliminary Response shows that there is a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one of the claims challenged
`
`21
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`IPR2017-02186
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`Patent 9,624,628 B2
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`in the Petition. We determine that Petitioner has established the requisite
`
`reasonable likelihood that Petitioner will prevail as to claim 1.
`
`This is a decision to institute an interpartes review under 35 U.S.C.
`
`§ 314. Our factual findings and determinations at this stage of the
`
`proceeding are preliminary, and based on the evidentiary record developed
`
`thus far. This is not a final decision as to the patentability of claims for
`
`which interpartes review is instituted. Our final decision will be based on
`
`the record as fully develope

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