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Wirtgen America, Inc. v. Caterpillar Inc.

Docket IPR2022-01397, Patent Trial and Appeal Board (Aug. 10, 2022)
Barry Grossman, James Mayberry, Matthew Meyers, presiding
Case TypeInter Partes Review
Patent
9975538
Patent Owner Caterpillar Inc.
Petitioner Wirtgen America, Inc.
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32 Other Fed Circuit mandate: Other Fed Circuit mandate

Document IPR2022-01397, No. 32 Other Fed Circuit mandate - Other Fed Circuit mandate (P.T.A.B. Oct. 29, 2024)
Document: 20 Page:1_ Filed: 10/24/2024 NOTE:This order is nonprecedential.
GAnited States Court of Appeals for the Federal Circuit
Cross-Appellant 2024-1802, 2024-1865 and from the United States Patent Appeals Trademark Office, Patent Trial and Appeal Board in No. IPR2022-01397.
The parties having so agreed,it is ordered that: (1) The proceedings are DISMISSED underFed.
Jarrett B. Perlow Clerk of Court October 22, 2024 Date ISSUED AS A MANDATE: October 22, 2024
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29 Director Review denial on FWD: Director Review denial on FWD

Document IPR2022-01397, No. 29 Director Review denial on FWD - Director Review denial on FWD (P.T.A.B. Apr. 24, 2024)
Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Office received a request for Director Review of the Final Written Decision for the above-captioned case.
The request was referred to me.
Upon consideration of the request, it is: ORDERED that the request for Director Review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.
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29 Order Denying Director Review of Final Written Decision: Director Review denial on FWD

Document IPR2022-01397, No. 29 Order Denying Director Review of Final Written Decision - Director Review denial on FWD (P.T.A.B. Apr. 24, 2024)
Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Office received a request for Director Review of the Final Written Decision for the above-captioned case.
The request was referred to me.
Upon consideration of the request, it is: ORDERED that the request for Director Review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.
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27 Final Written Decision original: Final Written Decision original

Document IPR2022-01397, No. 27 Final Written Decision original - Final Written Decision original (P.T.A.B. Mar. 12, 2024)
Accordingly, Xing purports to provide “a system and method for reducing the fuel consumption of a work vehicle that takes into account the operating efficiencies of the engine, transmission and various other power consuming components of the vehicle.” Id. at 1:63–67.
Patent 9,975,538 B2 Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.
More particularly, Petitioner asserts that “Willis’s milling machine, modified to include Xing’s algorithm and CVT, would have resulted in a controller that adjusted engine speed based on load and predefined efficiency points, as claimed.” Id. at 47 (citing Ex. 1006, 2:9–12, 3:50–67, 11:65–12:11).
Relying on the declaration testimony of Dr. Stein, Petitioner asserts that one of ordinary skill in the art “would have been motivated to modify Willis to include a variable transmission and control system like that taught by Xing to ‘maintain a desired rotor speed.’” Id. at 51 (citing Ex. 1003 ¶¶ 85–87).
Reply 20–21)), Patent Owner argues Petitioner’s argument is unpersuasive based on the deposition testimony of Dr. Kemal, who “testified that, even in view of Petitioner’s hypothetical configuration in which the swash plate angle is at zero, power could still be transmitted from the engine to the rotor.” Id. at 18–19 (citing Pet.
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26 Other Hearing transcript: Other Hearing transcript

Document IPR2022-01397, No. 26 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Feb. 9, 2024)
Wilson Sonsini Goodrich & Rosati 650 Page Mill Road Palo Alto, California 94304-1050 The above-entitled matter came on for hearing on Monday, December 11, 2023, commencing at 10:14 a.m., at the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
And my colleague is telling me also that if we take a look at Xing, column 9, lines 18 to 56, that's another place where it's discussing this relationship of the P engine P load and how that's corrected to determine the optimal fuel efficiency.
And it's very clear here Caterpillar made the argument, "It is, therefore, a matter of course, that if the increased costs are accepted, the skilled man must use the drive replacing the human manual force if the rear support wheel has become too heavy due to the size of the road construction machine."
To lay this out very clearly in our petition, a person of ordinary skill in the art would have been motivated to take the Piccoli shift cylinder, apply those teachings, then automate the movement of Volpe's wheel.
Dr. Klopp also contradicted Caterpillar's arguments by admitting several different reasons why a person of ordinary skill in the art would, in fact, have sought to steal -- steer a retracted non-coaxial rear wheel.
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23 Notice Other: LEAP Practitioner Request and Verification Form Petitioner

Document IPR2022-01397, No. 23 Notice Other - LEAP Practitioner Request and Verification Form Petitioner (P.T.A.B. Dec. 6, 2023)
Petitioner is granted an additional fifteen minutes of argument time during the oral hearing, and reminded that the LEAP practitioner is required to have a meaningful and substantive opportunity to argue.
This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or attorney-client privileged information.
Any dissemination, distribution, disclosure, or copying of this information by other than the intended recipient(s) is unauthorized and strictly prohibited.
However, routine uses of this information may include disclosure to the following: to non-Federal personnel under contract to the Agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of Congress; and to National Archives and Records Administration.
The applicable Privacy Act System of Records Notice for this information request is PAT-TM- 19, Dissemination Events and Registrations: Federal Register vol.
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21 Order on Motion: ORDER Setting Oral Argument 37 CFR § 4270

Document IPR2022-01397, No. 21 Order on Motion - ORDER Setting Oral Argument 37 CFR § 4270 (P.T.A.B. Nov. 13, 2023)

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