Filed on behalf of Oxbo International Corporation
`
`By: Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 332-5300
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00950
`Patent 8,166,739
`____________
`
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`Table of Contents
`
`I. 
`II. 
`
`Introduction ...................................................................................................... 1 
`Overview of the ’739 patent ............................................................................ 3 
`A.  Hay harvesting ....................................................................................... 3 
`B.  Windrow mergers .................................................................................. 6 
`C. 
`The invention of the ’739 patent ........................................................... 9 
`Person having ordinary skill in the art ........................................................... 11 
`III. 
`IV.  Claim construction ......................................................................................... 11 
`A.  Windrow merger .................................................................................. 12 
`B. 
`Pickup assembly .................................................................................. 13 
`V.  Overview of the asserted references .............................................................. 15 
`A. 
`Cereal combine harvester head (Declementi) ..................................... 15 
`1. 
`Grain harvesting ........................................................................ 15 
`2. 
`Cereal combine harvester header of Declementi ...................... 16 
`Swather attachment (US Honey) ......................................................... 19 
`B. 
`Hay harvester (Lohrentz) .................................................................... 21 
`C. 
`VI.  Standard for inter partes review .................................................................... 22 
`VII.  The law of obviousness ................................................................................. 22 
`VIII.  Petitioner fails to establish that claim 1 is obvious ....................................... 23 
`A. 
`Petitioner fails to prove that Declementi, US Honey, and Lohrentz
`disclose all elements of claim 1 ........................................................... 23 
`1. 
`None of Petitioner’s references disclose a windrow merger .... 24 
`2. 
`None of Petitioner’s references disclose three pickup
`assemblies ................................................................................. 26 
`a. 
`Declementi does not teach a pickup assembly ............... 26 
`b. 
`None of Petitioner’s references teach three pickup
`assemblies ....................................................................... 30 
`None of Petitioner’s references disclose “material pickup” ..... 32 
`i
`
`3. 
`
`

`

`B. 
`
`2. 
`
`3. 
`
`4. 
`
`Petitioner fails to provide a valid reason to combine Declementi, US
`Honey and Lohrentz to create the claimed windrow merger and
`provides no reasonable expectation of success ................................... 33 
`1. 
`Petitioner’s reason to modify Declementi to “increase operating
`capabilities” is based on hindsight ............................................ 33 
`The combination of Declementi, US Honey and Lohrentz
`would change the principle operation of the references ........... 36 
`Petitioner does not provide any reasoning for how the
`conveyors of US Honey would be incorporated into Declementi
` ................................................................................................... 39 
`Petitioner fails to establish any expectation of success for the
`proposed combination ............................................................... 43 
`IX.  Objective indicia support nonobviousness of the ’739 Patent ...................... 45 
`A.  Nexus exists between the claimed invention and Patent Owner’s
`commercial product ............................................................................. 46 
`Petitioner copied Patent Owner’s patented products .......................... 49 
`B. 
`Patent Owner’s product has received industry praise ......................... 56 
`C. 
`D.  Geiser is not probative of whether the claimed invention is obvious . 57 
`Conclusion ..................................................................................................... 59 
`
`
`X. 
`
`
`
`
`
`ii
`
`

`

`Exhibit #
`
`Description
`
`Exhibit List
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`Shinners, K.J., et al., Equipment to Rake and Merge Hay and
`Forage, University of Wisconsin Forage Research and Extension
`(2003), cited in Petitioner’s Ex. 1012, ¶118. (H&S 093286-91)
`
`Jarrett, EP0120574A1, October 3, 1984
`
`Declaration of Shane A. Brunner in Support of Patent Owner's
`Motion for Admission Pro Hac Vice
`
`Declaration of Thomas R. Johnson in Support of Patent Owner's
`Motion for Admission Pro Hac Vice
`
`Deposition transcript of Dr. Daniel J. Undersander
`
`Srivastava et al., Engineering Principles of Agricultural Machines
`(1993). pp. 406-443
`
`Deposition transcript of Mr. Ralph E. Shirley
`
`Declaration of Dr. Jonathan Chaplin
`
`Defendant’s Answers to Plaintiff’s First Set of Interrogatories
`
`2004 AE50 Outstanding Innovations, June/July 2004
`
`Redacted deposition transcript of Jake Kappelman (selected
`excerpts)
`
`Exhibit 12 of Jake Kappelman deposition
`
`Exhibit 13 of Jake Kappelman deposition
`
`H&S 152469-H&S 152495
`
`Claim chart regarding the Tri-Flex merger
`
`Listing of issued patents assigned to Kuhn S.A.
`
`iii
`
`

`

`2017
`
`2018
`
`2019
`
`Claim chart regarding Patent Owner’s products
`
`Declaration of Shane A. Brunner
`
`Declaration of Benjamin Legatt
`
`iv
`
`

`

`In April and May 2016, Petitioner H&S Manufacturing Company, Inc.
`
`(“Petitioner”) filed petitions for inter partes review of four U.S. patents owned by
`
`Patent Owner Oxbo International Corporation (“Patent Owner”). Aside from the
`
`present proceeding, the Board denied institution as to every ground, and for every
`
`claim challenged. Although Petitioner raised four separate grounds of
`
`unpatentability in this proceeding alone, the Board has instituted trial on one
`
`ground for the one claim of U.S. Patent No. 8,166,739 (the “’739 patent”).
`
`However, even as to the single ground as instituted, Petitioner has not
`
`demonstrated by a preponderance of the evidence that claim 1 of the ’739 patent is
`
`unpatentable under 35 U.S.C. § 103 as obvious over European Patent Application
`
`EP 0789990A1 (“Declementi”), U.S. Patent No. 5,031,394 (“US Honey”), and
`
`U.S. Patent No. 6,415,590 (“Lohrentz”) (collectively, “Petitioner’s references”).
`
`Patent Owner therefore requests that the Board issue a final written decision
`
`affirming the validity of that patent.
`
`I.
`
`Introduction
`
`Claim 1 of the ’739 patent requires a windrow merger with first, second, and
`
`third pickup assemblies that provide material pickup, among other things. None of
`
`Petitioner’s references disclose these limitations. With no reference disclosing
`
`those limitations, Petitioner fails to state a prima facie case that claim 1 is obvious.
`
`1
`
`

`

`Similarly detrimental to Petitioner’s obviousness claim is its failure to
`
`provide a valid reason to combine a combine harvester and two crop mowers to
`
`arrive at the claimed windrow merger. Although Petitioner alleges that the three
`
`references disclose all of the claim limitations, albeit incorrectly, Petitioner
`
`provides no “motivation to pick out those [] references and combine them to arrive
`
`at the claimed invention.” PersonalWeb Techs., LLC v. Apple, Inc., No. 2016-
`
`1174, 2017 U.S. App. LEXIS 2544, at *14 (Fed. Cir. Feb. 14, 2017). Nowhere has
`
`Petitioner explained or cited evidence showing how the combination of its
`
`references would work. Not only are Petitioner’s reasons to combine invalid and
`
`conclusory, they are also based solely on the advantages offered by the invention.
`
`That is the epitome of an improper use of hindsight.
`
`Finally, Petitioner failed to address objective indicia of nonobviousness in its
`
`petition. Petitioner copied Patent Owner’s products covered by the ’739 patent to
`
`make a strikingly similar windrow merger. In addition, shortly after Patent Owner
`
`released its patented 310 merger, it received significant industry praise, including
`
`the American Society of Agricultural Engineers (ASAE) outstanding innovation
`
`award in 2004. That award was based on the features of the ’739 patent.
`
`For these reasons, Petitioner has failed to carry its burden to show
`
`obviousness of the ’739 patent.
`
`2
`
`

`

`II. Overview of the ’739 patent
`A. Hay harvesting
`
`Helpful to understanding the ’739 patent is an overview of the windrow
`
`merger’s role in hay harvesting. A windrow merger is used “to merge cut hay
`
`and/or windrows into larger windrows for harvesting or baling.” (EX1003, col.
`
`2:42-44.) Hay is the leaves and stems of plants, such as alfalfa, clover, and grass,
`
`commonly fed to cattle. (EX1008, ¶ 6.) Hay is harvested and stored so that cattle
`
`have a steady food source, even at times of the year when hay is not growing.
`
`(EX2008, ¶ 28.)
`
`It is important to maximize hay quality – the better the hay, the better the
`
`cattle grow and the more milk they produce. (EX1008, ¶ 15.) To maximize hay
`
`quality, leaf loss during harvesting should be minimized. (EX1008, ¶ 47.) The
`
`hay’s leaves have a higher nutritional value than the stems. (EX1008, ¶ 47;
`
`EX2005, p. 52:1-11.) The leaves, however, are fragile and can easily break off the
`
`stem during harvesting when hay is handled too aggressively. (EX2005, p. 51:10-
`
`12.) When leaves break off the stem, they are difficult to gather and can remain on
`
`the field. (EX2005, p. 51:12-20.) As a result, the nutritional value and yield of the
`
`harvested hay is lower. (EX2005, p. 51:9-22; EX1008, ¶ 47.) Dirt contamination in
`
`the hay also decreases its nutritional value and thus, should be minimized.
`
`(EX1008, ¶ 56.)
`
`3
`
`

`

`The process of harvesting hay generally includes four steps: (1) cutting the
`
`hay, (2) allowing the hay to dry to the desired moisture content (15% for baled hay
`
`and 50-65% for chopped hay, i.e., haylage), (3) moving the cut hay into windrows,
`
`and (4) chopping or baling the hay. (EX2008, ¶ 29; EX1008, ¶¶ 8, 10, 19.)
`
`In the first step, hay is cut by a mower (self-propelled machines are often
`
`called a swather or windrower), such as that shown in photograph below.
`
`
`
`(EX2008, ¶ 30.) The mower cuts the hay and lays it in a swath slightly narrower
`
`than, or as wide as, the width cut. (EX1008, ¶¶ 20, 89; EX2005, p. 61:10-16.) The
`
`wider the swath of cut hay is spread after mowing, the better and more quickly it
`
`dries. (EX1008, ¶ 33.) Hay laid to dry in a wide swath ultimately leads to higher
`
`quality hay. (EX1008, ¶ 33.)
`
`After the hay dries to the desired moisture content, the swaths of cut hay are
`
`merged into a windrow. (EX1008, ¶ 36.) The following photograph shows Patent
`
`4
`
`

`

`Owner’s patented windrow merger merging three swaths of cut hay into one large
`
`windrow.
`
`(EX2008, ¶ 32.) After the hay is merged into a windrow, it is baled or chopped.
`
`(EX2008, ¶ 34.) Baling is shown in the following photographs.
`
`
`
`(EX2008, ¶ 34.) Chopping is shown in the following photograph:
`
`
`
`5
`
`

`

`
`
`(EX2008, ¶ 35.)
`
`B. Windrow mergers
`
`Windrow mergers are used for moving cut hay into windrows. (EX1003, col.
`
`1:21-24.) Windrow mergers do not cut hay or perform any other processing.
`
`(EX2005, p. 85:21-22.) Rather, the sole function of a merger is to pick up swaths
`
`or small windrows of previously cut hay and deposit the hay into a larger windrow.
`
`(EX1008, ¶ 54.) Windrow mergers have pickup assemblies that use tines to gently
`
`lift cut hay up from the ground and place it onto a transverse conveyor, where it is
`
`transferred to an end of the merger and deposited in a windrow on the field.
`
`(EX2007, p. 113:18-20; 115:21-25; EX2001, p. 3 (“the merger lifts the crop onto a
`
`belt conveyor that is used to move and deposit the swath into the desired position
`
`so that the crop is never dragged along the ground.”)
`
`6
`
`

`

`Windrow mergers offer advantages over other modes of putting hay into a
`
`windrow. Earlier mowers, also called windrowers, cut standing hay crop and
`
`immediately funneled the cut swath into a narrow windrow.1 (EX1008, ¶ 27.) That
`
`method of harvesting hay is undesirable because “[r]esearch has shown that forage
`
`should be . . . placed into a wide swath to dry leaves rather than immediately
`
`placed into a windrow.” (EX1008, ¶ 27.) Because cut hay should be laid in a wide
`
`swath, there needs to be a way to merge those swaths into large windrows.
`
`Windrow mergers “pick up swaths or windrows and move crop with a
`
`conveyor to place forage into a single windrow.” (EX1008, ¶ 54.) The merger’s
`
`gentle handling of cut hay minimizes leaf loss and dirt contamination in the
`
`windrow, resulting in higher quality forage that helps dairy cows grow faster and
`
`produce more milk. (EX1008, ¶¶ 15, 18, 56.) Hay rakes can also be used to gather
`
`cut hay and deposit it into a windrow, but they drag the hay along the ground,
`
`which can contaminate the windrow with dirt and cause leaf loss greater than a
`
`windrow merger. (EX1008, ¶¶ 46, 47, 54; EX2001, p. 3 “The major difference
`
`between [a windrow merger] and a rake is that the merger lifts the crop onto a belt
`
`
`
`1 “Windrowers” are not “windrow mergers” because they do not, and cannot,
`
`merge multiple windrows of previously cut crop, nor do they pick up crop at all;
`
`instead, windrowers cut and windrow crop in a single operation. (EX2008, ¶ 31.)
`
`7
`
`

`

`conveyor that is used to move and deposit the swath into the desired position so
`
`that the crop is never dragged along the ground.”)
`
`Prior to the invention described in the ’739 patent, windrow mergers had
`
`obstructions on the ends of the pickup heads. (EX1003, col. 2:5-11.) These
`
`obstructions included support mechanisms such as gauge wheels, motors, and other
`
`drive equipment that were used to drive the pickup heads and/or conveyors, but
`
`prevented multiple pickup assemblies from being aligned side by side in a way that
`
`would provide a continuous line of material pickup across the entire width of the
`
`merger. (EX1003, col. 2:5-14.) Instead, spaces, some several feet across, existed
`
`between pickup assemblies. (EX1003, col. 2:4-7.) Thus, if the hay was not cut in a
`
`configuration that exactly matched the position of the merger’s pickup assemblies,
`
`the merger would miss material passing between the pickup assemblies as the
`
`merger advanced, leaving large strips of hay in the field. (EX1003, col. 2:4-7.)
`
`Earlier mergers also had limited pickup width and lacked flexibility in merging
`
`operations. (EX1003, col. 1:29-32.)
`
`Although a windrow merger with more than one pickup assembly may be
`
`capable of picking up more material in a single pass, use of such a windrow merger
`
`was not always possible because of size, shape, and field terrain. (EX1003, col.
`
`5:24-26, 5:50-57.) The addition of pickup assemblies was also limited by the need
`
`to transport the merger in and out of fields and over roads that are subject to width
`
`8
`
`

`

`restrictions. (EX1003, col.1:41-47.) Thus, the width, alignment and number of
`
`pickup assemblies are limited by these constraints. The invention of the ’739 patent
`
`overcame these problems and significantly advanced windrow merger technology.
`
`C. The invention of the ’739 patent
`
`The invention described in the ’739 patent advanced windrow merger
`
`technology by providing a windrow merger with three separate pickup assemblies,
`
`each having a pickup head and transverse belt conveyor, that cooperatively provide
`
`an unobstructed continuous line of material pickup.
`
`The three pickup assemblies of the invention permit flexibility during
`
`merging operations. For example, the two outer pickup assemblies can move
`
`between extended and retracted positions, allowing the merger to operate with
`
`fewer than all pickup assemblies being extended. (EX1003, col. 5:22-25, 32-36.)
`
`Such a “two head merging configuration may be needed for irregularities in the
`
`terrain, to access smaller fields or irregular shaped fields, or for improved merging
`
`at edges of fields.” (EX1003, col. 5:28-32.) The independent operability of the
`
`pickup assemblies also permits the operator to continue merging operations with
`
`less than all three assemblies if one or more of the assemblies stops functioning.
`
`In the extended use position, the pickup assemblies are “positioned
`
`substantially to abut one another” with “the end tines 202 of one head are close to
`
`the tines 202 of another head.” (EX1003, col. 6:63-65; col. 7:1-2.) The placement
`
`9
`
`

`

`of the pickup assemblies substantially to abut one another provides “an
`
`unobstructed continuous line of material pickup.” The unobstructed line of material
`
`pickup allows the merger to pick up hay independent of the configuration in which
`
`it was cut. In other words, the aligned pickup assemblies “accommodate various
`
`spacing of windrows and material” and ensure “that material is not missed in the
`
`field.” (EX1003, col. 2:28-30.)
`
`Because each of the transverse conveyors is operable in either direction
`
`independently of the other belt conveyors, “material may be selectively transported
`
`either to the left or the right.” (EX1003, col. 5:38-39.) Thus, each of the conveyors
`
`may be operated to merge all material to either end of the merger, as shown in
`
`Figure 22, or the conveyors can also be operated in opposite directions
`
`simultaneously to merge material to both ends of the merger as shown in Figure
`
`24.
`
`The independent operability of the conveyors is also beneficial when
`
`merging with less than all three pickup assemblies. When only two pickup
`
`
`
`10
`
`

`

`assemblies are in use while the other is retracted, hay can be merged to the left, to
`
`the right, or to both sides. Similarly, when both outer pickup assemblies are
`
`retracted and only the center pickup assembly is in use (e.g., to merge narrow
`
`sections of a field), hay can be merged to the left or the right.
`
`The pickup assemblies of the ’739 patent can also be folded into a retracted
`
`travel position, as shown in FIG. 5. The retracted travel position enables a merger
`
`with a very wide pick up width to travel on roads, in narrow sections of fields, or
`
`around obstacles.
`
`III. Person having ordinary skill in the art
`A person of ordinary skill in the art would have an associate’s degree in
`
`engineering technology or a bachelor’s degree in agricultural or mechanical
`
`engineering or similar educational field, and about five years of appropriate
`
`experience designing and testing agricultural equipment. This person could also
`
`have less education with more years of appropriate experience. (EX2008, ¶ 25.)
`
`Petitioner’s alleged person of ordinary skill in the art does not differ significantly
`
`from this. (Petition, Paper No. 2 (“Pet.”), at 10.)
`
`IV. Claim construction
`The Decision instituting inter partes review determined that no construction
`
`was necessary for “continuous line of material pickup” or for “conveyor.”
`
`(Decision, Paper No. 7 (“Dec.”), at 7-8.) Patent Owner agrees. In addition, the
`
`11
`
`

`

`claim term “windrow merger apparatus configured for travel in a first direction,”
`
`should be a limitation of claim 1. And the broadest reasonable interpretation of
`
`“pickup assembly” in light of the patent is “an assembly that picks up cut
`
`material.”
`
`A. Windrow merger
`
`The preamble of claim 1 requires a “windrow merger apparatus configured
`
`for travel in a first direction.” The preamble limits claim scope when it states a
`
`“defining aspect of the invention” or when “it states the framework of the
`
`invention.” On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1343 (Fed.
`
`Cir. 2006); see also R.R. Street & Co. Inc. v. Chemische Fabrik Kreussler & Co.,
`
`GMBH, IPR2015-00289, Paper 9 at 7-9 (May 26, 2015) (under the broadest
`
`reasonable interpretation “we determine the preamble, ‘A method of dry cleaning,’
`
`is a claim limitation”). Whether the preamble is a limitation “can be resolved only
`
`on review of the entirety of the patent to gain an understanding of what the
`
`inventors actually invented and intended to encompass by the claim.” Corning
`
`Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)
`
`(holding that preamble phrase “an optical waveguide” limiting because the
`
`“specification makes clear that the inventors were working on the particular
`
`problem . . . . To read the claim in light of the specification indiscriminately to
`
`12
`
`

`

`cover all types of optical fibers would be divorced from reality. The invention is
`
`restricted to those fibers that work as waveguides as defined in the specification”).
`
`Similar to Corning Glass and R.R. Street, the ’739 patent specification
`
`makes clear that the invention is a windrow merger and not just any apparatus.
`
`Indeed, the patent’s Title, Abstract, Figures, written description and claims
`
`underscore that the patented invention relates exclusively to a windrow merger.
`
`(See, e.g., EX1003 at Title, Abstract.) Notably, the specification repeatedly states
`
`that the “present invention is directed to a windrow merger apparatus”. (EX1003,
`
`cols. 1:15-18, 2:42-43.) The specification’s repeated description of a windrow
`
`merger as the “present invention” provides further evidence that the claims are so
`
`limited. Netcraft Corp. v. Ebay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008)
`
`(holding that the “specification’s repeated use of the phrase ‘the present invention’
`
`describes the invention as a whole” and limits the claim scope accordingly). The
`
`’739 patent also distinguishes windrow mergers from other “harvesting
`
`machinery.” (EX1003, col. 1:38.) Thus, like in Corning Glass and R.R. Street, the
`
`preamble here defines what the inventors invented and a windrow merger
`
`apparatus is essential to the invention.
`
`B.
`
`Pickup assembly
`
`The broadest reasonable interpretation of a windrow merger “pickup
`
`assembly” is “an assembly that picks up cut material.” (EX2008, ¶ 17.) The ’739
`
`13
`
`

`

`specification broadly describes a pickup assembly in terms of relocation of cut
`
`crop. (EX1003, col. 1:21-27; col. 2:52-54.)
`
`In the Decision Instituting Inter Partes Review, the Board noted that “Patent
`
`Owner does not show sufficiently . . . that the cutting and collecting apparatus of
`
`Declementi is outside the scope of the broadest reasonable interpretation of ‘pickup
`
`assembly.’” (Dec. at 13.) As discussed above and in the ’739 specification, the
`
`windrow merger recited in claim 1 performs a specific function with particular
`
`components – it picks up, i.e., lifts, cut crop and directs the crop upwards and
`
`rearward to the transverse conveyors. (EX1003, col. 1:21-27; col. 2:52-54.) These
`
`characteristics of a windrow merger pickup assembly contrast with the reel and
`
`cutter bar of a combine harvester head.
`
`Both of Petitioner’s experts agree that a windrow merger pickup assembly is
`
`an assembly that lifts cut crop. Petitioner’s expert Mr. Shirley testified that a
`
`pickup assembly would include a pickup head. (EX2007, p. 113:18-20.) Mr.
`
`Shirley clarified that the pickup head would include tines that lift up cut material
`
`and throw the cut material back to the belt conveyors. (EX2007, p. 114:24-115:25.)
`
`Petitioner’s expert Dr. Undersander testified that a combine header would not be
`
`used to pick up previously cut hay. (EX2005, p. 76:2-20.) It follows that a person
`
`skilled in the art would not view a combine header reel and a windrow merger
`
`pickup assembly as the same apparatus. (See EX2008, ¶¶ 50, 54.) Accordingly, a
`
`14
`
`

`

`construction of “pickup assembly” that includes a combine header reel would be
`
`incorrect, and broader than is reasonable.
`
`V. Overview of the asserted references
`From among the four grounds and ten references asserted in the Petition, the
`
`Board instituted inter partes review for claim 1 on the single ground of
`
`obviousness including Declementi, US Honey, and Lohrentz.
`
`A. Cereal combine harvester head (Declementi)
`
`Declementi discloses a head assembly for a cereal combine harvester. The
`
`process for grain harvesting is different from hay harvesting.
`
`1. Grain harvesting
`Unlike hay harvesting, grain is typically not harvested until the crop is
`
`“senescent” (dry and done growing). (EX2008, ¶ 37). Grain harvesting involves
`
`multiple steps, including gathering, cutting, threshing, separating, and cleaning.
`
`(EX2008, ¶ 37.) All of these steps are usually performed by one machine called a
`
`“combine,” (or “combine harvester,” “grain combine,” or “cereal combine”).
`
`(EX2006, p. 408.) To accomplish this, the combine harvester is fitted with a header
`
`having a reel and cutter bar, an auger, and a processing assembly. (EX2008, ¶ 37.)
`
`An example of a self-propelled combine harvester is shown below:
`
`15
`
`

`

`
`
`(EX2008, ¶ 61.)
`
`When using a combine harvester the “uncut standing crop is pushed by the
`
`reel against the cutterbar and onto the platform.” (EX2006, p. 408 (emphasis in
`
`original).) Then, the “cut crop is conveyed towards the center of the platform from
`
`either side by the platform auger and conveyed to the threshing cylinder by the
`
`feeder conveyor.” (Id.) (emphasis in original). The feeder conveyor takes the cut
`
`crop to a portion of the combine harvester that threshes, beats, and separates the
`
`grain from chaff. (Id., pp. 408-410.)
`
`2. Cereal combine harvester header of Declementi
`Declementi is directed to providing a combine header that can be configured
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`for travel on roads. (EX1015, col. 1:3-8; 30-33.) Declementi accomplishes this task
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`by dividing the auger, reel, and cutterbar into three sections such that the two outer
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`16
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`sections fold over and on top of the fixed center section. (EX1015, col. 2:4-6.)
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`Figure 2 shows the harvester header with the outer sections folded over the fixed
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`center section:
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`
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`The reel of Declementi does not pick up cut crop. Instead, the reel of
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`Declementi, like all conventional combine harvesters, rotates downward to fold the
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`standing, uncut grain into the cutter blade. (EX2005, p. 68:3-13; EX2007, p.
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`140:25-141:6.) Figure 1 of Declementi shows the harvester header with the three
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`sections extended. Figure 1, below, is annotated to show the downward rotational
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`direction of the reel:
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`17
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`
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`Each of the header sections engage with one another such that the reel and auger
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`are driven from one end. Specifically, Declementi explains that a single motor
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`driving a single lateral part of the auger drives the overall auger. (EX1015, col.
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`2:7-27.) As noted in the Institution Decision, Declementi does not disclose three
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`conveyors. (Dec. at 10.)
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`The auger of Declementi directs the grain to the center of the header.
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`(EX2007, p. 142:10-11.) The center rear portion of the header has an opening
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`where the grain passes from the header to the threshing mechanism of the
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`harvester. (EX2007, p. 143:9-23; 144:4-11.) This central opening in the rear of the
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`header is shown in FIG. 4:
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`18
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`Side construction
`prevents lateral
`discharge of grain
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`
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`As seen in annotated Figure 4, above, the ends of the combine header are
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`configured to prevent any lateral discharge of grain on the sides of the header and
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`to ensure that the grain is directed to the center. (EX2007, p. 144:20-24.)
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`B.
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`Swather attachment (US Honey)
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`US Honey discloses a swather attachment for a bidirectional tractor.
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`(EX1017, Abstract, Title.) The swather attachment disclosed in US Honey cuts
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`standing crop and directs it into a narrow windrow. (EX2008, ¶ 43.) Petitioner’s
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`expert Dr. Undersander testified that the swather of US Honey would not be used
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`for harvesting hay. (EX2005, p. 72:22-73:12.) Instead, swathers, like that in US
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`Honey, are used for harvesting grain. (Id.) Dr. Undersander testified that windrow
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`mergers are not used in grain harvesting. (EX2005, p. 76:1-4 (“you would not
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`follow . . . [a swather] with a rake or a windrow merger? A: No. Because you
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`would lose grain. It would shatter out on the ground.”).) Figure 1 shows a top view
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`of the apparatus:
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`19
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`
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`The entire attachment pivots between a swathing and a traveling position.
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`(EX1017, col. 4:3-12.)
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`The apparatus in US Honey is a unitary header having a single sickle bar and
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`a single reel. (EX2008, ¶¶ 45, 47.) The reel is positioned above and extends the
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`width of the cutting head (seen best in FIG. 3, below):
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`20
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`Like Declementi, and unlike the claimed invention, US Honey teaches a
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`mechanism with a sickle bar, and a reel having a crop-facing side that rotates
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`downward (as annotated in FIG. 3, above) and which urges standing crop toward a
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`
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`cutting head. (EX2008, ¶ 45.)
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`C. Hay harvester (Lohrentz)
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`Lohrentz discloses a hay harvesting apparatus that cuts, conditions, and
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`conveys standing crop into a windrow in a single operation. (EX2008, ¶ 40.)
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`Lohrentz does not disclose components that pick up cut crop. (EX2008, ¶ 41.)
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`Instead, Lohrentz only teaches components that “when lowered [] sever standing
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`crop materials as the harvester moves through the field.” (EX1016, col. 2:19-21;
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`EX2008, ¶ 41.)
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`VI. Standard for inter partes review
`To prevail in its challenge to claim 1 of the ’739 Patent, Petitioner bears the
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`burden to show by a preponderance of the evidence that the challenged claim is
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`obvious over the combination of Declementi, US Honey, and Lohrentz. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d). Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the grounds
`
`for the challenge to each claim”)). This burden never shifts to Patent Owner. See
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27
`
`(Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`
`VII. The law of obviousness
`The only ground instituted in the Decision is based on obviousness.
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`Obviousness involves four inquiries: (1) the scope and content of the prior art; (2)
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`the differences between the prior art and the claims at issue; (3) the level of
`
`ordinary skill in the art at the time the invention was made; and (4) objective
`
`evidence of nonobviousness. Leo Pharm. Prods. v. Rea, 726 F.3d 1346, 1353 (Fed.
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`Cir. 2013) (reversing obviousness finding by Board on inter partes reexamination).
`
`“A determination of whether a patent claim is invalid as obvious under § 103
`
`requires consideration of all four Graham factors, and it is error to reach a
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`22
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`conclusion of obviousness until all those factors are considered.” Apple Inc. v.
`
`Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (citations
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`omitted). “This requirement is in recognition of the fact that each of the Graham
`
`factors helps inform the ultimate obviousness determination.” Id.
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`When a combination of references is relied upon for obviousness, there must
`
`be a reason or motivation to combine those references to guard against hindsight.
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`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1353-54 (Fed. Cir. 2013) (reversing
`
`district court’s obviousness finding because it improperly relied on unsupported
`
`statements to bridge the gap between the prior art and the claims). An obviousness
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`analysis must “avoid[] . . . even a hint of hindsight” and “cannot be based on the
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`hindsight combination of components selectively culled from the prior art to fit the
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`parameters of the patented invention.” Cheese Sys. v. Tetra Pack Cheese & Powder
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`Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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`A petitioner cannot satisfy its burden of proving obviousness by employing
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`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
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`1380 (Fed. Cir. 2016).
`
`VIII. Petitioner fails to establish that claim 1 is obvious
`A. Petitioner fails to prove that Declementi, US Honey, and Lohrent