The Joint Motion sought to retroactively seal and redact asserted confidential information from Exhibit 2014, a publicly-filed transcript of a July 2, 2018, teleconference with the Board (“Conf.

The specific relief requested in the Joint Motion is that we allow the parties to redact certain information relating to Patent Owner’s copying allegations from the Conference Transcript.

3 As noted previously, this is a Joint Motion, thus both Caterpillar (Petitioner) and Wirtgen (Patent Owner) seek to seal and redact the alleged confidential information.

An agreement between the parties to seal documents, however, does not establish that information is, in fact confidential, and does not constitute a legitimate basis for overcoming the public policy favoring openness.

Thus, we have not been directed to persuasive evidence that there is anything confidential contained in Patent Owner’s broad allegation of reverse engineering or copying, which is what the parties seek to seal and redact.

This device controls the position of the machine by operating hydraulic jacks to conform to the desired scarification profile using a set of sensors that transmit depth and angle values measured to their respective data processing systems.

A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)).

Our review of the entirety of his cross examination testimony and the failure of Mr. Labus to cite any evidence to support his assertions regarding adding sensors leads us to the conclusion that he fell victim to such ex post reasoning.

“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the ground for the challenge to each claim.’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)).

Accordingly, we decline to consider the merits of Petitioner’s Reply argument that one of ordinary skill in the art would have found it obvious to incorporate Glasson’s sensors into Swisher to permit a manual milling operation.

Entering Public Version of the Final Written Decision

On May 22, 2019 we issued a Final Written Decision in this Proceeding.

On June 4, 2019, the parties filed a proposed public version of the Final Written Decision.

The proposed redacted version does not seek to seal any of the information contained in the Final Written Decision.

In consideration of the foregoing, it is hereby: ORDERED that the public version of the Final Written Decision is entered.

Granting the Parties’ Unopposed Motions to Seal, and Requiring a Proposed Redacted Version of the Final Written Decision

These exhibits are documents or contain information from third-party Roadtec, Inc. that were produced in the related ITC investigation.

The records for the instant proceedings will be preserved in their entirety, and the confidential documents will not be expunged or made public, pending appeal.

No later than June 12, 2019, the parties shall jointly submit, as an Exhibit, a proposed redacted version of the Final Written Decision that will be publicly available.

If the parties are unable to reach an agreement on a proposed redacted public version of the Final Written Decision, the parties should contact the Board as soon as possible when the lack of an agreement is evident to arrange a conference call to further discuss this issue.

I guess I just want you to think about that as you, when we get to that, that, you know, why should we -- I feel like you're trying to tell a story that makes Caterpillar look bad but, I mean, the law is kind of clear that it's not entitled to much weight unless there's these other factors.

As far as whether or not a POSITA could have done it, the only thing Caterpillar said here is the very bottom sentence which, if we can quote that box, is this simple design modification involved known elements and would have provided predictable results.

Setting aside this requirement for grade and slope control, why would there be, why would there be -- why would there not be a reasonable expectation of success that a person of ordinary skill could put this, this sensor in there and have a machine that could cut a preselected -- a selected upper portion of a roadway surface?

If you look to adding sensors, we have an elevation control assembly and now we, for the first time, never discussed in a reference, our concern about longitudinal inclination of the machine, parallel to the surface mode, and the latter aspects that are described in the ’530 patent that, that is a substantial redesign.

The Ericsson case also said that Petitioner cited no new evidence and merely expands on previously argued rationale as to why the prior art disclosures are insubstantially distinct from the challenged claims.

The parties also should note that at least one member of the panel will be attending the oral hearing electronically from a remote location.

If demonstratives are to be used during oral argument, they should be exchanged with opposing counsel by email no later than Noon Eastern Time, Thursday, January 24, 2019.

The parties are reminded that the presenter must identify clearly and specifically each demonstrative (e.g., by slide or screen number) referenced during the oral argument to ensure the clarity and accuracy of the transcript.

The Board expects lead counsel for each party to be present in person at the oral hearing.

Ralph W. Powers III Jon E. Wright Kyle E. Conklin Steve Merrill Daniel E. Yonan

The document was produced in a related ITC investigation, Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067 (USITC, July 19, 2017).

Petitioner submits that the document “helps rebut Wirtgen’s mischaracterization about the state of the art and copying allegations by showing that a machine having the features described in the ’530 patent was publicly available before the patent’s priority date.” Mot.

Petitioner need not disclose its litigation strategy of its case that will be raised in future briefing of issues or prove every contention with evidence sufficient for a finding of unpatentability in a final written decision.

Not only has the document already been assembled, and produced, for the ITC case, it has already been filed in this proceeding (with the proper exhibit labels) by Patent Owner for purposes of this Motion.

Ralph W. Powers III Jon E. Wright Kyle E. Conklin Steve Merrill Daniel E. Yonan