`
`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 No.: IPR2016-00950
`U.S. Patent No. 8,166,739
`
`______________
`
`
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`PATENTEE’S PROPOSED CLAIM CONSTRUCTIONS ARE WRONG .. 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Use of “Window Merger” in the Preamble Does Not Limit the
`Claim ..................................................................................................... 3
`
`“Material” Is Not Limited to Either Cut Crops or Cut Hay ................. 7
`
`“Pickup Assembly” Is Not Limited to a Particular Pickup Mechanism
`or a Particular Kind of Material ........................................................... 9
`
`Patentee Could Have Filed a Motion to Amend Claim 1 to Recite
`These Narrowing Constructions, But Did Not .................................... 12
`
`III. PATENTEE’S EXPERT TESTIMONY IS FLAWED ................................. 12
`
`A.
`
`B.
`
`C.
`
`Chaplin’s Opinions Rely On Patentee’s Narrow Claim Constructions
` ............................................................................................................. 13
`
`Chaplin’s Testimony Is Incomplete, Inaccurate, Inconsistent and
`Unreliable ............................................................................................ 14
`
`Chaplin’s Testimony on Secondary Considerations Should Not Be
`Considered ........................................................................................... 17
`
`IV. PATENTEE DOES NOT OVERCOME THE REASONED RATIONALE
`FOR COMBINING THE REFERENCES .................................................... 20
`
`A.
`
`B.
`
`C.
`
`Patentee’s Challenges to the Combination of References All Rely on
`Narrowed or Non-Existent Claim Limitations .................................... 21
`
`Farm Implement Components and Functions Were Known To Be
`Interchangeable ................................................................................... 23
`
`The Problems Addressed by the ‘739 Patent Were Known Problems
`with a Limited Number of Available Solutions Involving Advantageous
`Mechanical Rearrangement of Known Components .......................... 24
`
`V.
`
`
`CONCLUSION .............................................................................................. 27
`
`
`
`
` ii
`
`

`

`
`
`Case
`
`Table of Authorities
`
`Page
`
`Am. Med. Sys., Inc. v. Biolitic, Inc., 618 F.3d 1354 (Fed.Cir.2010) .......................... 4
`
`Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed.Cir.2002) ................. 5
`
`Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed.Cir.2001) ........... 6
`
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251
`(Fed.Cir.1989) ............................................................................................................ 4
`
`Cuozzo Speed Techs., LLC. v. Lee, 136 S.Ct. 2131 (2016) ....................................... 2
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356
`(Fed. Cir. 2006) ........................................................................................................ 25
`
`Graham v. John Deere, 383 U.S. 1 (1966) ........................................................ 25, 26
`
`Howmedica Osteonics Corp. Zimmer, Inc., 640 Fed.Appx. 951
`(Fed.Cir.2016) ........................................................................................................ 4, 5
`
`In re Heck, 699 F.2d 1331,1333 (Fed.Cir.1983) ..................................................... 23
`
`In re Kahn, 441 F.3d 977 (Fed.Cir.2006) ................................................................ 23
`
`In re Kao, 639 F.3d 1057 (Fed.Cir.2011) ................................................................ 18
`
`KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) ............................................. 25
`
`Lumenton Holdings, Inc. v. Capella Photonics, Inc. IPR2015-01971, Paper 13
`(Oct. 14, 2016) ........................................................................................................... 6
`
`McAfee v. Cap. Co., IPR2016-00222, Paper 40 (Mar. 2, 2017) ................................ 6
`
`Netcraft Corp. v. Ebay Inc., 549 F.3d 1394 (Fed.Cir.2008). ..................................... 4
`
`On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331 (Fed.Cir.2006) ............. 3
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed.Cir.1999) ............. 5
`
`
`
` iii
`
`

`

`
`
`
`Rowe v. Dror, 112 F.3d 473 (Fed.Cir.1997) .............................................................. 5
`
`R.R. Street & Co. Inc. v. Chemische Fabrik Kreussler & Co. GMBH, IPR2015-
`00289, Paper 9 (May 26, 2015) ................................................................................. 6
`
`Sharp Corp. v. Surpass Tech Innovation, LLC, IRP2015-00021, Paper 44 (Feb.
`26, 2016)
` ............................................................................................................. 12
`
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed.Cir.2004) ......... 2
`
`Symantec Corp. v. Computer Associates Intern., Inc., 522 F.3d 1279
`(Fed.Cir.2008) ........................................................................................................... 2
`
`Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358 (Fed.Cir.2011) ....................... 19
`
`Wyers v. Master Lock Co., 616 F.3d 1231 (Fed.Cir.2010) ...................................... 17
`
`
`
`
`
`Statutes & Rules
`
`37 C.F.R. §41.200(b) ................................................................................................. 2
`
`
`Other Authorities
`
`MPEP § 2123 ........................................................................................................... 23
`
`MPEP § 2144(II) ...................................................................................................... 25
`
`
`
`
`
` iv
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`

`

`
`
`
`
`
`
`List of Evidence and Exhibits Relied Upon in the Petition
`
`Exhibit #
`
`Name
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`U.S. Patent No. 7,310,929 (the ‘929 Patent)
`
`RESERVED
`
`U.S. Patent No. 8,166,739 (the ‘739 Patent)
`
`Prosecution History for the ‘739 Patent
`
`RESERVED
`
`RESERVED
`
`Power of Attorney for Petitioner H&S Manufacturing
`Company, Inc.
`
`Declaration of Dan Undersander
`
`Declaration of Ralph Shirley
`
`U.S. Patent No. 4,409,780 (Beougher)
`
`U.S. Patent No. 4,932,196 (Schnittjer)
`
`U.S.S.R. Inventor’s Certificate No. SU 835359A1
`(Zhavoronkin)
`
`U.S. Patent No. 6,205,757 (Dow)
`
`U.S. Patent No. 3,468,107 (van der Lely)
`
`EP Patent Application 0789990A1 (Declementi)
`
`U.S. Patent No. 6,415,590 (Lohrentz)
`
`U.S. Patent No. 5,031,394 (US Honey)
`
`Canadian Patent No. 1151431B (CA Honey)
`
`U.S. Patent No. 6,775,969 (Wuebbels)
`
` v
`
`

`

`
`
`
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`U.S. Patent No. 5,911,625 (von Allwörden)
`
`U.S. Patent No. 7,628,004 (Geiser)
`
`Srivastava, et al. (1993). Chapter 8: Hay and Forage
`Harvesting in Principles of Agricultural Machines
`(pgs 325-406)
`
`Carr, Patrick M. , et al. “Barley Versus Oat: Which Makes
`the Superior Forage Crop,” 2001 Annual Report Agronomy
`Section, Dickinson Research Extension Center
`
`Jonathan Chaplin, Ph.D. Deposition Transcript dated April
`10, 2017
`
`H&S 2130/2135 TRI-FLEX MERGERS, Operator’s
`Manual, dated January 15, 2015
`
`Internet Archive web page for AE50 Entry Information
`archived from www.asae.org, dated December 5, 2003
`
` vi
`
`

`

`INTRODUCTION
`
`The Patent Owner’s Response (“Response”) fails to overcome the arguments
`
`
`
`I.
`
`
`
`and evidence presented by Petitioner that claim 1 of the ’739 Patent is obvious
`
`over Declementi in view of US Honey and further in view of Lohrentz. The Board
`
`instituted trial on this ground in the Decision to Institute (“Decision”). The
`
`Response fails to rebut the unpatentability of this ground for three primary reasons.
`
`First, Patentee’s claim construction arguments for “windrow merger,”
`
`“pickup assembly,” and “material” are wrong. They do not use a broadest
`
`reasonable interpretation (“BRI”) construction. In addition, they improperly read
`
`limitations into the claims, either from the preamble or the specification.
`
`Second, Patentee’s expert testimony is flawed. It only uses Patentee’s overly
`
`narrow claim constructions. It is also contradictory, unfounded, and/or unreliable.
`
`Third, the Response does not counter the Petitioner’s reasoned rationale for
`
`combining the references. The evidence of record supports the Petitioner’s
`
`arguments. The case law also supports the Petitioner’s arguments.
`
`Fundamentally, the ‘739 Patent represents the same kind of routine
`
`improvement to a piece of farming equipment that the Supreme Court found
`
`obvious in Graham v. Deere. Petitioner requests that the grounds adopted in the
`
`Decision be maintained and claim 1 of the ‘739 Patent found unpatentable.
`
`
`
`
`
`1
`
`

`

`
`
`II.
`
`
`
`PATENTEE’S PROPOSED CLAIM CONSTRUCTIONS ARE
`WRONG
`
`
`Patentee argues in the Response for narrowing claim constructions for three
`
`different claim terms: “windrow merger” (Response, pg.12-13), “pickup assembly”
`
`(Response, pg.15-17), and, by way of argument, “material” (Response, pg.15-17).
`
`None of Patentee’s proposed constructions are consistent with a BRI construction.
`
`37 C.F.R. §41.200(b); Cuozzo Speed Techs., LLC. v. Lee, 136 S.Ct. 2131,2142-
`
`2146 (2016). Each proposed construction improperly attempts to read limitations
`
`into the claim, either from the preamble, Symantec Corp. v. Computer Associates
`
`Intern., Inc., 522 F.3d 1279 (Fed.Cir.2008), or the specification, Superguide Corp.
`
`v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed.Cir.2004).
`
`Both Petitioner and Patentee argued for claim construction of certain terms
`
`(Petition, pg.8; Preliminary Response, pg.58). Even so, the Decision determined
`
`that no express claim construction was needed for any of the claim terms of claim
`
`1 of the ‘739 Patent.
`
`“For purposes of this decision, we determine that no express
`construction is necessary for ‘conveyor’ or any other claim term, and
`apply the ordinary and customary meaning of each term.”
`(Decision, pg.8, emphasis added).
`
`
`
`2
`
`

`

`
`
`There is nothing in the Response that merits a change in the Board’s
`
`determination in the Decision that no express construction is necessary for
`
`any claim term.
`
`A.
`
`The Use of “Window Merger” in the Preamble Does Not Limit the
`Claim
`
`
`
`Patentee argues that the term “windrow merger” recited only in the
`
`preamble of claim 1 should be construed as limiting. (Response, pg.12-13).
`
`Without explaining the proper legal standard to be used, Patentee cites
`
`several cases as purported support for this argument. But none of these cases
`
`are applicable on their facts, and none of the Federal Circuit cases involved a
`
`determination of claim scope in the context of a challenge to patentability of
`
`an apparatus claim at the USPTO under a BRI construction standard.
`
`
`
`The On Demand case involved claim construction of a method claim in the
`
`context of infringement, not in the context of validity. The decision is inapposite
`
`because the patentee in that case was arguing for a broad construction of the
`
`preamble so as to exclude limitations from the preamble, not for a narrow
`
`construction that incorporated limitations from the preamble into the claim scope.
`
`On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331,1343 (Fed.Cir.2006)
`
`(“high speed manufacture of a single copy of a book” in preamble found to be
`
`
`
`3
`
`

`

`
`
`limiting for infringement where “said selected one of said books” is repeatedly
`
`recited in the body of the method claim).
`
`
`
`The Corning case is not controlling because the preamble claim language
`
`urged as limiting by the patentee was a term that was expressly defined in the
`
`specification. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
`
`1256-1257 (Fed.Cir.1989). In the ‘739 Patent, however, the term “windrow
`
`merger” is never expressly defined in the specification.
`
`The Netcraft case cited for the proposition that use of the phrase “the present
`
`invention” with a claim limitation in the specification should limit the claim scope
`
`is not relevant because the phrase being construed was a claim phrase from the
`
`body of the claim, not the preamble. Netcraft Corp. v. Ebay Inc., 549 F.3d 1394,
`
`1395 (Fed.Cir.2008).
`
`The proper legal standard to be used in determining whether a claim term
`
`recited in the preamble should be construed to limit the claim scope for purposes of
`
`determining patentability at the USPTO was recently summarized by the Federal
`
`Circuit in Howmedica Osteonics Corp. v. Zimmer, Inc., 640 Fed.Appx. 951
`
`(Fed.Cir.2016) involving an appeal in an Inter Partes Reexamination.
`
`“[T]here is no simple test for determining when a preamble
`limits claim scope, [but] we have set forth some general principles to
`guide that inquiry.” Am. Med. Sys., Inc. v. Biolitic, Inc., 618 F.3d
`1354,1358 (Fed.Cir.2010). Generally, a preamble is not limiting. Allen
`
`
`
`4
`
`

`

`
`
`
`
`Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,1346
`(Fed.Cir.2002). But a preamble may limit the invention if it recites
`essential structure or steps, or if it is “necessary to give life, meaning,
`and vitality” to the claim. See Pitney Bowes, Inc. v. Hewlett-Packard
`Co., 182 F.3d 1298,1305 (Fed.Cir.1999). Conversely, a preamble does
`not limit an invention “where a patentee defines a structurally
`complete invention in the claim body and uses the preamble only to
`state a purpose or intended use for the invention.” Rowe v. Dror, 112
`F.3d 473,478 (Fed.Cir.1997).
`In light of those principles, we agree with the Board and
`conclude that the preamble, “medical implant,” does not limit claim
`scope. The applicant did not rely on that phrase to define the
`invention, or to distinguish prior art during prosecution. Nor does any
`term in the bodies of the claims rely on “medical implant” for
`antecedent basis.
`On the contrary, the body of each claim describes a structurally
`complete invention, and deletion of the preamble language does not
`affect that structure. The preamble merely describes a use or purpose
`for irradiated and heat treated [polyethelene] with the claimed
`properties. The specification's regular use of the preamble language,
`“medical implant,” is of no additional import here. . . .
`Because we agree with the Board, and conclude that the
`preamble language, “medical implant,” does not limit the claims, we
`need not also address whether [the prior art reference] teaches medical
`implants . . . .”
`Howmedica at 956 (internal citations omitted).
`
`5
`
`

`

`
`
`In the only PTAB decision cited in the Response, the claim at issue was a
`
`method claim, not an apparatus claim, and a derivative of the preamble term “dry
`
`cleaning” was recited in the body of the claim. R.R. Street & Co. Inc. v. Chemische
`
`Fabrik Kreussler & Co. GMBH, IPR2015-00289, Paper 9 at 7-9 (May 26, 2015).
`
`In contrast, other more recent PTAB decisions have found that terms used
`
`solely in a preamble for an apparatus claim are not limiting. See, Lumenton
`
`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-01971, Paper 13 at 12-13 (Oct.
`
`14, 2016) (finding “servo-based” limitation recited only in preamble not limiting);
`
`McAfee v. Cap. Co., IPR2016-00222, Paper 40 at 8-18, (Mar. 2, 2017) (finding
`
`“real time” limitation recited only in preamble not limiting). Each of these
`
`decisions is more factually similar to the present case and more consistent with the
`
`analysis summarized in Howmedica.
`
`Like the claim in Howmedica, the body of claim 1 of the ‘739 Patent
`
`describes a structurally complete apparatus, and deletion of the preamble term
`
`“windrow merger” does not affect that structure. Patentee did not expressly define
`
`this term in the specification and did not rely on this term to distinguish prior art
`
`during prosecution even when rejected with art like that used in the Decision.
`
`(Ex.1003; Ex.1004, pg.70-74, 93-97). See, Catalina Mktg. Int'l v.
`
`Coolsavings.com, Inc., 289 F.3d 801,808 (Fed.Cir.2001).
`
`
`
`6
`
`

`

`
`
`There were no Reasons for Allowance provided to indicate that “windrow
`
`merger” formed any basis for the patentability of claim 1. Instead, there is only the
`
`interview summary of the agreement reached between the Examiner and the
`
`Applicant regarding the limitations which made the claim allowable over the art of
`
`record. (Ex.1004, pg.82-90). (Subject matter of proposed claim 9 −which became
`
`claim 1 of the ‘739 Patent) was considered allowable by the Examiner − “each of
`
`the first, second and third belt conveyors being operable in either direction
`
`independently of the other belt conveyors.”).
`
`When the record is analyzed under the proper legal standard it is apparent
`
`that the preamble term “windrow merger” is, at best, only an indication of purpose
`
`or intended use of the claimed apparatus and does not limit claim 1.
`
`B.
`
`“Material” Is Not Limited to Either Cut Crops or Cut Hay
`
`
`
`Patentee repeatedly tries to argue for the patentability of claim 1 because the
`
`scope of the claim should be limited to processing cut crops or cut hay. (Response,
`
`pg.6, 15-17; Preliminary Response, pg.6, 8, 59-60). The Decision, however, has
`
`already determined that there is no claim language that contains these argued
`
`limitations.
`
`“Moreover, we also are not persuaded on the present record that the
`scope of claim 1 should be limited only to an apparatus that forms or
`merges windrows of “cut crop,” as Patent Owner implies, because
`
`
`
`7
`
`

`

`
`
`Patent Owner has not shown that the claim language contains such a
`limitation.”
`(Decision, pg.12-13, emphasis added).
`
`Other than Patentee’s proposed constructions of “windrow merger” and
`
`“pickup assembly,” the Response identifies no other support for a narrow
`
`construction of the claim term “material” limited to only cut crops or hay. On the
`
`contrary, Patentee’s expert admits that claim 1 is not limited to just hay and could
`
`not point to where the term “cut” is recited in claim 1. (Ex.1024, pg.68:6-9).
`
`The specification of the ‘739 Patent expressly does not limit itself to just
`
`hay. In more than one instance it more broadly recites “hay or other material.”
`
`(Ex.1003, Col.2:58) (emphasis added). As recognized by the Court in Howmedica,
`
`the fact that the specification regularly uses the same terms to describe the
`
`invention cannot overcome the presumption of the ordinary and customary
`
`meaning of a broader term used in the claims.
`
`Patentee’s argument that the claim is somehow limited to only cut crops or
`
`cut hay is also in direct conflict with Patentee’s admission that no construction is
`
`necessary for the only two claim terms that reference the term “material” in claim
`
`1. Patentee expressly concurred, and the Board agreed, that no construction is
`
`necessary for the claim limitation “continuous line of material pickup” or for
`
`“conveyor” that is used “to convey material.” (Response, pg.12; Decision, pg.7).
`
`
`
`8
`
`

`

`
`
`The term “material” is a generic term that is not limited to specific kinds of
`
`materials under a BRI claim construction. Patentee’s admission that no
`
`construction is necessary for either “continuous line of material pickup” or
`
`“conveyor” only confirms this understanding that the ordinary and customary
`
`meaning of “material” is not limited to specific kinds of materials. The fact that the
`
`Examiner cited at least one prior art reference (Beougher) that picked up other
`
`kinds of materials, like uncut forage crops processed by a combine harvester,
`
`confirms that the Examiner did not consider the term “material” to be limited in the
`
`way that Patentee now argues. (Ex.1004, pg.70-74; Ex.1010). Patentee’s arguments
`
`about the purported differences in grain/cereal crops versus forage crops have no
`
`basis whatsoever in any claim language in claim 1 and are factually incorrect as
`
`forage crops includes grain and cereal crops. (Response, pg.15-17; Ex.1008, ¶6)
`
`C.
`
`“Pickup Assembly” Is Not Limited to a Particular Pickup
`Mechanism or a Particular Kind of Material
`
`Patentee proposes that the BRI construction of “pickup assembly” should be
`
`
`
`“an assembly that picks up cut material.” (Response, pg.13, emphasis added). In
`
`the Preliminary Response, Patentee already argued that Declementi does not teach
`
`a pickup assembly “capable of picking up cut hay off the ground.” (Preliminary
`
`Response, pg.60). The Decision recognized this as an argument for a narrowing
`
`claim construction and rejected it:
`
`
`
`9
`
`

`

`
`
`“Patent Owner does not show sufficiently that the claimed “pickup
`assembly” should be limited to an apparatus with tines or that the
`cutting and collecting apparatus of Declementi is outside of the scope
`of the broadest reasonable interpretation of “pickup assembly.”
`(Decision, pg.13, emphasis added).
`
`Patentee’s proposed narrower construction in the Response flies in the face
`
`of Patentee’s arguments in the Preliminary Response against the claim construction
`
`for “continuous line of material pickup” proposed by Petitioner. Patentee urged the
`
`Board not to impose any limits on this term, even though the need for an
`
`unobstructed line of material pickup and the problems of gaps between adjacent
`
`pickup heads is discussed extensively in the Background of the ‘739 Patent.
`
`(Ex.1003, Col. 2:4-38).
`
`“Precisely how the side by side aligned pickup assemblies accomplish
`this, including the spacing of the tines, is not limited by the claim, and
`should not be limited by the Board.”
`(Preliminary Response, pg.14, emphasis added).
`
`
`
`Unlike the term “pickup” which is used more than 80 times in the ‘739
`
`Patent, the term “cut” is used just twice. (Ex.1003, Col.1:22 “gather material, such
`
`as cut hay,” Col.2:43-44 “merge cut hay and/or windrow”). In the first use in the
`
`Background “cut hay” is clearly presented as an example of one kind of material,
`
`not as a limit on any of the kinds of material. In the second use in the Summary,
`
`the use of “and/or” to explain the relationship between “cut hay” and “windrow”
`
`
`
`10
`
`

`

`
`
`clearly implies that the two terms are not intended to be used interchangeably. In
`
`neither usage is the term “cut” found in the same sentence as the term “pickup.”
`
`The Patentee’s argument and expert testimony on whether a reel of the
`
`pickup assembly rotates upward or downward adds nothing to support a narrowed
`
`construction. The argument depends upon “windrow merger” being construed as
`
`limiting, and on a more detailed analysis than is supported by either the actual
`
`language of claim 1 or the ‘739 Patent itself. (Response, pg.29-30; Ex.2008, ¶¶56-
`
`58). Patentee argues that “[e]ach pickup head includes tines that rotate upward and
`
`rearward to gently lift the crop and transfer it to the transverse conveyors.”
`
`(Response, pg.27). Contrary to the arguments in the Response, the term “rotate”
`
`does not appear in claim 1 at all, and there is no other claim language that limits a
`
`direction of rotation. Variations of the term “rotate” are only used four times in the
`
`‘739 Patent. (Ex.1003, 2:52, 2:60, 7:8, 7:12). The term “upward” is used only
`
`twice, neither in the context of movement of material. (Ex.1003, 3:9, 7:56 ).
`
`Importantly, none of these usages specifies an upward rotation of the star wheel
`
`that is described for the pickup head. Although the figures show tines on a star
`
`wheel bent in an orientation that might suggest an upward direction, there are no
`
`arrows or other express indications of any particular direction of rotation.
`
`Despite specific guidance in the Decision that Patentee should identify
`
`support for a construction that “pickup assembly” must include tines, Patentee not
`
`
`
`11
`
`

`

`
`
`only did not provide such evidence but now proposes an even narrower
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`construction of “pickup assembly.” There is nothing in the language of claim 1,
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`the specification of the ‘739 Patent, or the prosecution history that supports
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`Patentee’s arguments for a construction of “pickup assembly” that effectively
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`amounts to an assembly that lifts cut crop from the ground by an upward rotation
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`of tines on a pickup reel. Such a narrowed construction is not a BRI construction.
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`D.
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`Patentee Could Have Filed a Motion to Amend Claim 1 to Recite
`These Narrowing Constructions, But Did Not
`Patentee had the option to file a Motion to Amend to clarify the scope of
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`claim 1 to accord with these arguments. But Patentee elected not to file such a
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`motion. This Board should not adopt Patentee’s narrowed claim construction
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`arguments when, unlike district court litigation, the Patentee had the option to
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`clarify the claim elements in question. Sharp Corp. v. Surpass Tech Innovation,
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`LLC, IRP2015-00021, Paper 44 at 7 (Feb. 26, 2016). (Rejecting narrowed claim
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`construction - “Patent Owner elected not to file a motion to amend to include a
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`claim that explicitly recites overdriven or overdriving in this trial.” (emphasis
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`added)).
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`III. PATENTEE’S EXPERT TESTIMONY IS FLAWED
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`In instituting trial on the ground based on Declementi, the Decision
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`characterized Patentee’s arguments in the Preliminary Response with respect to
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`this ground as “unsupported attorney argument,” “does not show sufficiently,”
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`“has not sufficiently addressed,” or are not persuasive “on the present record.”
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`(Decision, pg.13-14). To address these issues, Patentee submitted the expert
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`declaration of Dr. Chaplin with the Response. (Ex.2008). But his testimony is
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`flawed.
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`If Patentee’s proposed claim constructions are rejected for the reasons
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`discussed in Section II, Dr. Chaplin’s testimony cannot be given any meaningful
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`weight. As demonstrated by the declaration itself, and by the cross-examination of
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`Dr. Chaplin, Dr. Chaplin’s testimony and opinions are expressly and entirely
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`premised upon the overly narrow, incorrect claim constructions proposed by
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`Patentee.
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`Moreover, the weight of Dr. Chaplin’s testimony must be questioned in any
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`event because of errors and inconsistencies, as well as unexplained choices for
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`relying upon some parts of prior art references, while rejecting other parts of the
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`same prior art references that undermine Patentee’s arguments.
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`A.
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`Chaplin’s Opinions Rely On Patentee’s Narrow Claim
`Constructions
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`Dr. Chaplin’s opinions are expressly consistent with Patentee’s arguments
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`
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`regarding the claim constructions for “pickup assembly” and “windrow merger.”
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`(Ex.2008, ¶¶17-18, 49, 55-58, 65-66, 69). During cross-examination, he confirmed
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`that each of his opinions is entirely premised upon these constructions. (Ex.1024,
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`52:13-55:12).
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`Q And you say it's your opinion that a person of ordinary skill
`in the art would interpret that phrase as “an assembly that picks up cut
`material.” Did I read that right?
`A Correct.
`Q And is that the construction that you have used throughout
`this declaration when you address the issue of a pickup assembly?
`A Yes. I believe so.
`*****
`Q …is it your opinion that windrow merger, which is recited in
`the preamble, is a limitation of this claim?
`A That's my understanding. Yes.
`Q And your opinion?
`A Yeah.
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`B.
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`Chaplin’s Testimony Is Incomplete, Inaccurate, Inconsistent and
`Unreliable
`
`In addition to the fact that all of Chaplin’s testimony expressly relies on
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`
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`improper claim constructions, his testimony should not be accorded any significant
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`weight because it is based on an incomplete and inaccurate understanding of the
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`prior art in the relevant fields, and because it is inconsistent and unreliable.
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`Dr. Chaplin relies upon undated photographs of various devices that do not
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`show important details and are labeled as “present day,” which he admits are not
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`prior art. (Response, pg.4-6; Ex.2008, ¶¶ 30, 32, 34-35; Ex.1024, 72:13-73:4,
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`75:14-20, 77:6-78:3). Despite opining on the scope of knowledge of a person
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`skilled in the art, he acknowledges that he was unaware of and had not considered
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`other relevant prior art in this field when forming his opinion of what a person
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`skilled in the art would know. (Ex.1024, 130:9-21, 130:23-131:12, 158:17-159:9).
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`His decisions on what he considered with respect to the prior art and what he
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`excluded are arbitrary and unsupported. (Ex.1024, 153:19-158:4).
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`Dr. Chaplin’s testimony is unreliable on several key points. For example, he
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`relied heavily on Chapter 9 of Srivastava in his report, yet disagreed with or
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`offered contradictory testimony to another chapter of the same book. Chapter 8 of
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`Srivastava describes interchangeability of pickup reels between mower
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`conditioners, forage harvesters and combines (Ex.1022, pg.346), yet, when asked
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`about that teaching during his deposition, Dr. Chaplin disagreed with what is
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`taught in Chapter 8. (Ex.1024, 157:7-16).
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`
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`Dr. Chaplin also asserted that none of the cited art discloses pickup
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`assemblies or would pick up crop; not Declementi (Ex.1024, 115:3-13), not
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`Lohrentz (Ex.1024, 86:4-6), not US Honey (Ex.2008, ¶46). Yet when shown
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`Figure 8.5 of Srivastava (reproduced below), Dr. Chaplin acknowledged the crop is
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`being lifted. (Ex.1022, pg.346; Ex.1024, 157:2-6). The mower-conditioner
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`depicted below is similar to the devices of US Honey and Lohrentz, and the same
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`chapter of Srivastava later describes interchangeability of pickup reels between
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`mower conditioners, forage harvesters and combines (Ex.1022, pg.346)
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`
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`Dr. Chaplin also ignores the express teachings of the prior art. Declementi
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`plainly describes its device as having “pickup reel” elements. (Ex.1015, 4:25-41).
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`Yet he refers to those elements merely as a reel, and asserts a person skilled in the
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`art would simply ignore the term “pickup.” (Ex.1024, 109:2-8; 120:3-7).
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`Even though his opinion that Declementi does not include a “pickup
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`assembly” under his improperly narrowed claim construction because the cutter
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`bar would not lift up cut crop, Dr. Chaplin admits that for lodged crops that are
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`matted down in the field a pickup reel like Declementi’s would “pick crops up for
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`cutting.” (Ex.1024, 151:6-19).
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`C.
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`Chaplin’s Testimony on Secondary Considerations Should Not Be
`Considered
`Dr. Chaplin’s testimony is also used in the Response as evidence of
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`secondary considerations with respect to purported copying, industry praise, and
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`lack of simultaneous invention for the ‘739 Patent. As a threshold matter, the
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`Response fails to satisfy the nexus requirements for consideration of such
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`secondary evidence.
`
`Dr. Chaplin’s testimony of purported copying conflates infringement with
`
`copying. But copying is not a synonym for infringement as Federal Circuit
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`precedent makes clear. “Not every competing product that falls within the scope
`
`of a patent is evidence of copying; “otherwise ‘every infringement suit would
`
`automatically confirm the nonobviousness of the patent.’” Wyers v. Master Lock
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`Co., 616 F.3d 1231,1246 (Fed.Cir.2010) (citation omitted).
`
`His testimony of evidence of copying is also incomplete. He ignores the
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`claim limitation that the belt conveyors are “operable in either direction
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`independently of the other belt conveyors.” (Ex.2008, ¶ 91). The Tri-Flex product
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`he testifies about uses a control panel that includes only three buttons to control the
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`operation of the conveyors as a set. (Ex.1025). As shown below, there are buttons
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`controls for left, stop, and right, but there is no separate button for independently
`
`controlling the direction of the middle conveyer.
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`17
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`(Ex.1025, pg.20)
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`
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`None of Dr. Chaplin’s testimony demonstrates that he reviewed the
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`operation of the Tri-Flex control buttons to confirm that the conveyors of the Tri-
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`Flex product are actually “operable in either direction independently of the other
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`belt conveyors” as claimed. In re Kao, 639 F.3d 1057,1068 (Fed.Cir.2011) (finding
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`no nexus when “secondary consideration actually results from something other
`
`than what is both claimed and novel”). Chaplin also fails to address how, without a
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`separate directional control for the center conveyor, each conveyor can move
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`independent of the other