Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Entered: May 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`
`Petitioner,
`
`V.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`
`Case IPR2018-00155
`
`Patent 9,624,628 B2
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`
`Instituting Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`Paper No. 8
`Entered: May 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`
`Petitioner,
`
`V.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`
`Case IPR2018-00155
`
`Patent 9,624,628 B2
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`
`Instituting Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00155
`
`Patent 9,624,628 B2
`
`A. Background
`
`1.
`
`INTRODUCTION
`
`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.
`
`‘ 9,624,628 B2 (“the ’628 patent”). Paper 1 (“Pet”). Wirtgen America Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim Resp.”).
`
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
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`“unless .
`
`.
`
`. there is a reasonable likelihood that the petitioner would prevail
`
`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.
`
`37 C.F.R. § 42.4(a).
`
`‘
`
`On April 24, 2018, the Supreme Court held that, if an inter partes
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`review is instituted, a final written decision under 35 U.S.C. § 318(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, 138 S. Ct. 1348, 1359—60 (2018).
`
`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 21 of the
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`challenged claims. Accordingly, we institute an inter partes 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.
`
`B. Additional Proceedings
`
`The parties indicate that the ’628 patent is currently asserted by
`
`Wirtgen against Caterpillar in several other proceedings, namely, Wirtgen
`
`America, Inc. v. Caterpillar Prodotti Stradali S. r.L. et al., Civ. No. 0:17-cv-
`
`02085 in the United States District Court for the District of Minnesota,
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`which Petitioner indicates is currently stayed pending resolution of ITC
`
`2
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`
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`IPR2018-00155
`
`Patent 9,624,628 B2
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`Investigation No. 337-TA-1067, captioned 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
`
`States District Court for the District of Delaware. Pet. 86—87, Paper 4, 2—3.
`
`The same claims of the ’628 patent are challenged also by Petitioner
`
`in IPR2017-02186. See Prelim. Resp. 10.
`
`C. The ’628 Patent
`
`The ’628 patent (Ex. 1001), titled “Auxiliary Drive,” describes a
`
`roadway construction machine such as a cold milling device having a
`
`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
`
`1:39-44. Figure 2 of the ’628 patent is reproduced below.
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`
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`
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`IPR2018-00155
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`Patent 9,624,628 B2
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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 of drum 8.
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`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’
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`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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`215—7. The auxiliary drive provides torque delivering a more accurate and
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`safe (slower) rotation of the drum during maintenance as compared to drive
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`motor 6, in order to “rotate the work roller by a small rotational angle to
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`bring not yet exchanged tools into a more convenient mounting position.”
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`Id. at 2:11—13. The ’628 patent explains that “[d]uring this period, the drive
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`motor for the work roller is out of operation or decoupled.” Id. at 2: 19—20.
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`D. Illustrative Claim
`
`Of the challenged claims, claims 1, 15, and 21 are independent. Each
`
`of dependent claims 2, 5, 6, 9—14 depend directly from claim 1, claims 16—
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`20 depend directly from claim 15, and claims 22 and 27—29 depend directly
`
`from method claim 21. Claim 21 illustrates the claimed subject matter and
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`is reproduced below:
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`21. A method of manufacturing a construction machine for the
`treatment of ground surfaces, comprising:
`
`(a) providing a machine frame;
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`(b) mounting a work drum on the machine frame;
`
`(0) mounting a work motor on the machine frame;
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`((1) connecting the work motor with the work drum via a
`transmission so that the work motor rotates the work drum at a
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`
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`IPR2018-00155
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`Patent 9,624,628 B2
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`first rotational speed when the work motor is activated,
`transmission including:
`
`the
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`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
`
`a reduction gear connected between the drum-side pulley and the
`work drum to reduce a rotational speed of the work drum
`relative to the drum-side pulley; and
`
`(e) mounting an auxiliary drive at a location on the construction
`machine, the auxiliary drive being operably engaged with the
`transmission to drive at least a portion of the transmission so that
`the auxiliary drive can rotate the work drum at a second
`rotational speed less than the first rotational speed when the work
`drum is in a raised condition out of engagement with any ground
`surface.
`
`Ex. 1001, 8:7—32.
`
`Independent claim 15 is an 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 1 is an apparatus claim, and
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`describes the auxiliary drive having a first and a second “configuration,”
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`rather than the work drum having “a first rotational speed,” and “a second
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`rotational speed less than the first rotational speed.” Id. at 626—28. A
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`notable difference from method claim 21 is that both independent apparatus
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`claims 1 and 15 recite that the auxiliary drive in not only mounted “at a
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`location on the construction machine,” but also, that “the auxiliary drive
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`remains mounted at the location on the construction machine.” See id. at
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`6:26—27, 7249—5 1.
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`
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`IPR2018-00155 .
`Patent 9,624,628 B2
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`E. The Alleged Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable on the
`
`following specific grounds.I
`
`
`—W_Challened
`
`
`
`§ 103
`
`§ 103
`
`l, 2, 5, 6, 9—20,
`and 22
`
`
`
`PM-565 Operation Manual2 and PM-565 Parts
`Manual3
`
`PM-565 Operation Manual, PM-565 Parts
`Manual, and one of Smith4, or Neuer5
`
`F. The Level of Ordinary 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
`
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`
`Union Oil Co., 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
`
`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, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`‘.Petitioner supports its challenge with the opinion testimony of Lee A. .
`Horton, P.E. (Ex. 1010). See infra.
`2 Ex. 1003, PM-565 COLD PLANER, OPERATION & MAINTENANCE MANUAL,
`Caterpillar, (Jan. 1995).
`3 Ex. 1004 PM-565 COLD PLANER, PARTS MANUAL, Caterpillar, (Dec. 1994).
`4 Ex. 1006, GB 2060794 B, App’1.No. 8032569 (Pub. May 7, 1981).
`5 Ex. 1007, GB 2208237 B, App’l. No. 8816683 (Pub. July 15, 1987).
`
`
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`IPR2018-00155
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`Patent 9,624,628 B2
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`In determining a level of ordinary skill, we also may look to the prior
`
`art, which may reflect an appropriate skill level. Okajz'ma, 261 F.3d at 1355.
`
`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
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`construction machine design, or 2) seven to ten years of experience working
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`on mobile construction machine design.” Pet. 13 (citing Ex. 1009 11 18).
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`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.
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`Although neither party provides a detailed analysis addressing the
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`factors described above, the prior art reflects a knowledge of mechanical
`
`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;
`
`Ex. 1003, 4; Ex. 1004, 3; Ex. 1006, 1—2. For purposes of this Decision, and
`
`in accordance with the prior art and the obviousness challenges presented by
`
`Petitioner, we determine that the level of ordinary skill in the art includes a
`
`person having 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 an equivalent balance of education and
`
`work experience in design and construction of mobile construction
`
`machines.
`
`
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`IPR2018-00155
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`Patent 9,624,628 B2
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`II.
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`CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`In an inter partes 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 CPR. § 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
`
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`
`F.3d 1056, 1062 (Fed. Cir. 2016). If the specification “reveal[s] a special
`
`definition given to a claim term by the patentee that differs from the
`
`meaning it would otherwise possess[,] .
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`.
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`. the inventor’s lexicography
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`governs.” Phillips v. AWH Corp, 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
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`banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002)). We apply this standard to the claims of the ’628 patent.
`
`B. Auxiliary Drive
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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. 24.
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`We note initially that this proposed construction is directed really to
`
`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 24—25 (citing Ex. 20[07]).
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`Patent Owner argues, however, that this definition does not give a full and
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`accurate meaning in light of the specification of the ’628 patent. Id. at 25.
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`IPR2018-00155
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`Patent 9,624,628 B2
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`In support of its claim construction, Patent Owner relies up an explanation in
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`the 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
`
`operating “the drive motor for the work roller is out ofoperation or
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`decoupled.” Id. (citing Ex. 1001, 2:12—14, 19—20)(emphasis 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.
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`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 between the drive motor and
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`auxiliary motor. To the extent Patent Owner points to Wirtgen’s
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`characterization of the auxiliary drive as “independent” in European
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`opposition proceedings, this description appears to relate to the mechanical
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`coupling of the auxiliary drive unit to the drive train and work drum
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`transmission, not how the auxiliary unit is powered. See Prelim. Resp. 27
`
`(citing Bx. 1002, 187).
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`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, 5:35—48. Indeed, even if we assume an
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`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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`IPR2018-00155
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`Patent 9,624,628 B2
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`via an altemator/generator or a pump powered by the drive motor, even
`
`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. 1009 1118.
`
`In the proposed construction, Patent Owner’s implicit interpretation of
`
`“decoupled” in the written description, assumes a complete separation, e.g.,
`
`total mechanical, hydraulic, and electrical, etc., separation, of the main drive
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`motor from both the work drum and the auxiliary motor. See Prelim.
`
`Resp. 25—29 (“Because the drive motor is out of operation or decoupled
`
`when 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
`
`auxiliary motor. See Ex. 1001 , 226—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 2:4—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.”).
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`We appreciate that it is an important aspect of the invention to rotate
`
`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
`
`10
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`IPR2018-00155
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`Patent 9,624,628 B2
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`pr0poses. For instance, the ’628 patent states that an electric auxiliary drive
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`“can be powered by a generator.” Id. 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 of this Decision, under the broadest
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`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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`We remind the parties that our claim construction determinations in a
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`decision on institution are preliminary in nature. See Tri Vascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]he Board is not bound
`
`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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`A. 35 US. C. § 325(d)
`
`Our discretion as to whether to institute an inter partes review is
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`guided, in part, by 35 U.S.C. § 325(d), which provides: “[T]he Director may
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`take into account whether, and reject the petition or request because, the
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`same or substantially the same prior art or arguments previously were
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`presented to the Office.” 35 U.S.C. § 325(d); see generally Cultec, Inc. v.
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`Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)
`
`ll
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`
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`IPR2018-00155
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`Patent 9,624,628 B2
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`(informative); Hospira, Inc. v. Genentech, Inc, Case IPR2017-00739
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`(PTAB July 27, 2017) (Paper 16) (informative); Unified Patents, Inc. v.
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`Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10)
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`(informative); see also Neil Ziegmann N.P.Z, Inc. v. Stephens, Case
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`IPR2015-01860, slip op. 6—14 (PTAB Sept. 6, 2017) (Paper 13) (expanded
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`panel) (explaining the rationale and purpose of § 325(d)).
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`Our discretion under § 325(d) involves a balance between competing
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`interests. See Hospira, slip op. at 18. “On the one hand, there are the
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`interests in conserving the resources of the Office and granting patent
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`owners repose on issues and prior art that have been considered previously.”
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`Id. (quoting Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip
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`op. 7 (PTAB Apr. 3, 2017) (Paper 8)). “On the other hand, there are the
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`interests of giving petitioners the Opportunity to be heard and correcting any
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`errors by the Office in allowing a patent—in the case of an inter partes
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`review—over prior art patents and printed publications.” Id.
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`Patent Owner contends that we should exercise our discretion and
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`deny the Petition “because the Office already decided that the claims are
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`patentable in View of the PM-565 machine.” Prelim. Resp. 17. Patent
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`Owner argues that the Examiner “extensively and repeatedly considered the
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`PM-565 machine through prosecution.” Id. at 18. Patent Owner points out
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`specifically that during prosecution of one of the ’628 patent’s parent
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`applications Wirtgen overcame the Examiner’s anticipation rejection by
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`noting that the claimed step of “‘arranging an auxiliary drive’ was a step in a
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`method of manufacturing, which was not taught by the PM—565 machine’s
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`auxiliary rotor drive because it was placed in a storage location during
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`manufacture.” Id. at 19 (citing Ex. 2011, 18, 58—59, 71).
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`12
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`IPR2018-00155
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`Patent 9,624,628 B2
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`We do not agree with Patent Owner that we should exercise our
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`discretion and deny institution in this case. To begin with, the Examiner’s
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`rejection in prosecution was anticipation, in contrast to obviousness in view
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`of PM565 Operations Manual and various secondary references, applied in
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`this proceeding. Novelty under 35 U.S.C. § 102 and nonobviousness under
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`35 U.S.C. § 103 are separate conditions of patentability. Cohesive Techs.,
`Inc. v. Waters Corp, 543 F.3d 1351, 1363 (Fed. Cir. 2008). The tests for
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`anticipation and obviousness are different. Id. at 1364. The elements of
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`proof for anticipation and obviousness are different. Duro-Last, Inc. v.
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`Custom Seal, Inc., 321 F.3d 1098, 1107—08 (Fed.Cir.2003). Although we
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`appreciate that Operation Manual appears to disclose that the auxiliary rotor
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`drive is stored in a storage position when the main drive is driving the belt
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`transmission, the claim language in the ’628 patent method claim is different
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`from that considered by the Examiner during prosecution. Compare Ex.
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`2011, 28—59 with Ex. 1001, 8:24—31. Additionally, Petitioner has presented
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`testimony from its declarant, Mr. Horton, that a person of ordinary skill in
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`the art would have understood Operation Manual and the auxiliary drive
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`being in a “service location” “to teach a step of ‘mounting an auxiliary drive
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`at a location on the construction machine, the auxiliary drive being operably
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`engaged with the transmission.” Pet. 52.
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`Thus, we do not agree with Patent Owner that the Petition’s
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`obviousness challenges based on PM565 present the same arguments that
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`were considered in the prosecution. Weighing the prosecution evidence with
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`respect to anticipation of different claim language against the claims of the
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`’628 patent and the obviousness challenges presented in the Petition, we
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`decline to exercise our discretion to deny the Petition under § 325(d).
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`IPR2018-00155
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`Patent 9,624,628 B2
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`B. 35 U.S.C. § 314
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`Patent Owner urges us to deny this Petition under § 314(a) because
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`Petitioner previously filed a different petition asserting different grounds and
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`prior art on the same claims. Prelim. Resp. 8—17. Patent Owner contends
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`that this follow-on Petition is an “abuse of the review process” because
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`Petitioner knew of the Operation Manual and Parts Manual, (Caterpillar’s
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`own manuals), as well as Smith and Neuper, and the second petition was
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`“filed nearly a month later on November 16, 2017, challeng[ing] the exact
`
`same claims.6 Id. at 10—12.
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`We disagree with Patent Owner’s characterization that the two
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`petitions contain duplicative arguments simply because the challenges based
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`on different prior art are separated into two proceedings. See id. at 13. Also,
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`the time delay of less than a month between the filing of the two petitions
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`does not suggest any strategic staging of multiple filings based on the
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`Board’s decisions or Patent Owner’s briefs. See General Plastic Industrial
`
`Co., Ltd v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 17—
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`18 Paper 19 at 16—17 (PTAB, Sept. 6, 2017) (Paper 19) (precedential).
`
`These facts set out by Patent Owner are insufficient, in this case, for us to
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`exercise discretion under 35 U.S.C. § 314(a) to decline institution of trial.
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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).
`
`6 The same claims of the ’628 patent are challenged in IPR2017-02186 filed
`Oct. 19, 2017.
`
`14
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`
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`IPR2018-00155
`
`Patent 9,624,628 B2
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`C. The Legal Constructs of Obviousness
`
`Section 103(a) forbids issuance of a patent when “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int ’1 Co. v. Teleflex Inc., 550 US. 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;
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`(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
`
`others. Graham v. John Deere C0., 383 US. 1, 17—18 (1966); see KSR, 550
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`US. at 407 (“While the sequence of these questions might be reordered in
`
`any particular case, the [Graham] factors continue to define the inquiry that
`
`controls”). The Court in Graham explained that these factual inquiries
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`promote “uniformity and defmiteness,” 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 US. 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 US. at 415.
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`Whether a patent claiming the combination of prior art elements would have
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`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
`
`15
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`IPR2018-00155
`Patent 9,624,628 B2
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`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
`
`selected and combined those prior art elements in the normal course of
`
`research and development to yield the claimed invention.” Id.
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`Moreover, in determining the differences between the prior art and the
`
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious. Litton Indus. Prods, Inc. v. Solid State
`
`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. Aeroquip Corp.,
`
`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,
`
`is but an aid in reaching the ultimate determination of whether the claimed
`
`invention as a whole would have been obvious”) (citation omitted).
`
`“A reference must be considered for everything it teaches by way of
`
`technology and is not limited to the particular invention it is describing and
`
`attempting to protect.” E WP Corp. v. Reliance Universal Inc, 755 F.2d 898,
`
`907 (Fed. Cir. 1985).
`
`As a factfinder, we also must be aware “of the distortion caused by
`
`hindsight bias and must be cautious of arguments reliant upon ex post
`
`reasoning.” KSR, 550 US. at 421. This does not deny us, however,
`
`“recourse to common sense” or to that which the prior art teaches. Id.
`
`Against this general background, we consider the references, other
`
`evidence, and arguments on which the parties rely.
`
`16
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`IPR2018-00155
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`Patent 9,624,628 B2
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`D. Claims 21 and 27—29— Alleged obviousness over PM565
`
`Operation Manual and PM565 Parts Manual
`
`Petitioner asserts that method claims 21 and 27—29 would have been
`
`obvious over Haehn and Smith. Pet. 30—5 8. Petitioner has established a
`
`reasonable likelihood of prevailing on its assertion that claims 21 and 27—29
`
`are obvious for the reasons explained below.
`
`1. ‘PM565 Operation Manual
`
`The PM565 Operation Manual (“Operation Manual”) is, as the title
`
`states, the operation manual for the PM565 cold milling machine
`
`manufactured by Caterpillar. Ex. 1003, 1—4. A photograph of Caterpillar’s
`
`PM565 machine is reproduced from Operation Manual below.
`
`
`
`Id. at 4. Operation Manual explains that the PM565 as depicted above in the
`
`photograph, “is used for cold milling pavement to restore the surface to a
`
`specified grade and slope.” Id.
`
`Operation Manual shows and describes various technical and
`
`structural aspects of the PM565 including a machine having a frame, a belt
`
`17
`
`
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`IPR2018-00155
`
`Patent 9,624,628 B2
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`drive system, and a drum as shown below in another figure reproduced from
`
`Operation Manual.
`
`
`
`Id. at 63. The figure above shows a drum with replaceable tools and
`
`reference number 3 pointing to a rotor switch to operate an auxiliary rotor
`
`(drum) drive. Id. Operation Manual, in other photographs and descriptions,
`
`discloses a main engine and a planetary gear reduction mechanism. See id.
`
`at 15,
`
`1 19.
`
`2. PM5 65 Parts Manual
`
`The PM565 Parts Manual (“Parts Manual”) is, as billed, the parts
`
`manual for the PM565 cold milling machine manufactured by Caterpillar.
`
`Ex. 1003, 3. Parts Manual explains that “Caterpillar Parts Manuals include
`
`illustrations of the groups or assemblies which make up the machine. These
`
`illustrations show the standard components and many of the attachments for
`
`each machine.” Id.
`
`By way of example, Parts Manual illustrates various components of
`
`the PM565, such as a main engine reproduced below.
`
`18
`
`
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`IPR2018-00155
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`Patent 9,624,628 B2
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`BASIC ENGINE
`
`
`
`7116536
`
`‘ 7'6536
`4'8061
`4W4588
`9V3368
`2U3815
`5N0083
`1010523
`
`VIEWED FROM
`UPPER RIGHT
`FRONT OF ENGINE
`
`PLUG‘PI PE
`SLEEVE-BOTTOM LINER
`SLEEVE-LIFTER BORE
`INSERT-SEAT
`.834HM( .031N)1Fl(
`INSERT-SEAT
`1 .5911!“ .OBIN)"'I<
`INSERT-SEAT
`2.719.“ . 1 ‘IINN'HK
`INSERT-LINER SE“!
`3.21M(.20!N)THK
`U-MUNTED 0N LH SIDE
`OF CYLIINDER BLOCK
`L-FOR SALVAGE OF BOTTOM
`LiNER O-RENG BORE. OTV
`To BE OETEEMINED BY USER
`N-FOR SALVAGE OF DAMAGED
`LIFTER BORES IN CV1.
`BLOCK. QTY TO BE
`DETERMINED BY USER.
`
`s-uo'r smvm
`v-sewzme ILLUSTRATION
`
`7129614
`4NOO33
`
`4 7E6479380045
`81.6428
`1' ZNB'IBO
`7U853‘
`8145283
`356605
`954190
`BT67“
`7127407
`1 PLUG'PIPE
`7U5534
`2 PLUG-O-RINB
`954190
`2 SEAL‘O-RXNG (19.18” ID)
`2149780
`mum van or nus snoup
`a-us: AS Raoumeo
`c-cmusa mm pnevrous 1w:
`
`3
`
`1U5081
`8T67S7
`6519138
`614618
`4N0697
`
`1
`
`38 . 10w“ 1 .5OIN)OD
`'0k-
`
`2 SEAL-0431MB (19.18” 10)
`2 PLUG-PIPE
`
`082 CYLINDER BLOCK GP
`w5081-Page 5
`
`p.570,” Ep
`
`Id. at 4. The figure above is a technical illustration, and component list, of
`
`part of the engine block for the PM565. Also, below is a partially
`
`reproduced figure depicting a drum drive line system from Parts Manual.
`
`19
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`
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`IPR2018-00155
`
`Patent 9,624,628 B2
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`'
`
`I
`
`V POWER TRAIN
`
`
`
`Id. at 197. The partial figure, above, from Parts Manual, depicts a belt drive
`
`including motor side pulley 4, drum-side pulley 5, idler 6, and belt 7. Id. at
`
`197—8.
`
`3. Claim 2]
`
`Petitioner contends that Operation Manual discloses a roadway
`
`construction machine for treating ground surfaces and that a person of
`
`ordinary skill in the art would have “recognized that a method of
`
`manufacturing the machine disclosed in Operation Manual must have
`
`included steps of ‘providing,’ ‘mounting,’ and ‘connecting’ the components
`
`of the machine.” Pet. 32 (citing Ex. Ex.1009, 1173).
`
`20
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`IPR2018-00155
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`Patent 9,624,628 B2
`
`Petitioner points to an Operation Manual figure, reproduced below,
`
`with Petitioner’s annotations, as disclosing that “the work drum is supported
`
`within the drum housing, and the housing is supported by the machine
`
`frame.” Id. at 34 (citing Ex. 1009 1] 77; Ex.1003, 62).
`
`
`
`Id. at 62. Petitioner’s annotated Operation Manual photograph, shown
`
`above, depicts a machine frame, drum housing and work drum. Ex. 1009
`
`1] 79. Petitioner points also to various other figures asserting that Operation
`
`Manual discloses also a work motor for driving, at different speeds via a
`
`throttle, the work drum through a. belt drive system including a motor-side
`
`and drum-side pulleys. See Pet. 37—40 (citing Ex. 1003, 117—119; Ex. 1009
`
`1111 84, 98—101).
`
`Petitioner contends further that Parts Manual depicts a reduction gear
`
`situated between the drum-side pulley and the work drum “to reduce a
`
`rotational speed of the work drum relative to the drum-side pulley” as called
`
`for in claim 21, and that the reduction gear is arranged within the work
`
`drum. Id. at 41—42, 46—47 (citing Ex. 1004, 470).
`
`The auxiliary drive, Petitioner argues is taught by Operation Manual,
`
`as a part of the transmission that connects to the drum-side pulley, in order
`
`to rotate the work drum at a different speed than the main engine to permit
`
`21
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`
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`IPR2018-00155
`
`Patent 9,624,628 B2
`
`replacement of work tools on the drum. Pet. 48—52. The auxiliary motor is
`
`shown, in part, in the Operation Manual figure, reproduced below, in a
`
`service position “operably engaged” according to Petitioner, with the drum-
`
`side pulley of the transmission as recited in claim 21.
`
`
`
`Install! the auxiliary rotor drive in it's service
`3.
`position. as shown.
`
`The photograph from Operation Manual, above, sh
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