Case 1:17-cv-00770-JDW-MPT Document 118-10 Filed 11/17/22 Page 1 of 75 PageID #:
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`EXHIBIT J
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`Case 1:17-cv-00770-JDW-MPT Document 118-10 Filed 11/17/22 Page 2 of 75 PageID #:
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`PUBLIC VERSION
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`\
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
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`In the Matter of
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`CERTAIN ROAD CONSTRUCTION
`MACHINES AND COMPONENTS
`. THEREOF
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`Inv. No. 337-TA-1088
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`V
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`'
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`V
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`COMMISSION OPINION
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`On February 14, 2019, the presiding Administrative Law Judge (“ALJ”) in the above­
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`identified investigation issued her final initial determination (“FID”) finding a violation of
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`section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), by
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`respondents Wirtgen GmbH, Wirtgen Group Holding Gmbl-l(“Wi1tgen Group”), Wirtgen
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`America, Inc. (“Wirtgen America”), and Joseph Vogele AG (“Vogele”) (collectively,
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`“RespondentS”). Having considered the FID, the parties’ petitions, responses thereto, written
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`submissions, and the record in this investigation, the Conunission has determined to affinn with
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`modification the FID’s findings with respect to a section 337 violation by respondents Wirtgen
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`GmbH, Wirtgen.Group, and Wirtgen America (collectively, “Wirtgen”), based on the
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`infringement of claim 19 of U.S. Patent No. of 7,140,693 (“the ’693 patent”). All findings in
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`the FID that are consistent with this opinion are affirmed.
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`I.
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`BACKGROUND
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`A.
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`Procedural Background
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`The Commission instituted this investigation on November 29, 2017, based on a
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`complaint filed by Caterpillar Inc. of Peoria, Illinois and Caterpillar Paving Products, Inc. of
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`Minneapolis, Minnesota (collectively, “Caterpillar” or “Complainants”). See 82 Fed. Reg.
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`56625-26 (Nov. 29, 2017). The complaint, as supplemented, alleges violations of section 337 of
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`1
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`PUBLIC VERSION
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`the Tariff Act of 1930, as amended (19 U.S.C. § 1337), based upon the importation into the
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`United States, the sale for importation, and the sale within the United States after importation of
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`certain road construction machines and components thereof by reason of infringement of claims
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`1, 15-19, 24-28, 36, and 38 ofthe ’693 patent; claims 1-5, 8, 9, and 12-17 ofU.S. Patent No.
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`9,045,871 (“th/e’871 patent”); and claims 1-3, 7, and 8 of U.S. Patent No. 7,641,419 (“the ’4l9
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`patent”).
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`See id.
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`-
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`'
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`The notice of investigation identifies the following respondents: Wirtgen GmbH of
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`Windhagen, Germany; Vogele of Ludwigshafen, Germany; Wirtgen Group of Windhagen,
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`Germany; and Wirtgen America of Antioch, Tennessee.‘ See id. The Office of Unfair Import
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`Investigations is not a party to this investigation. See id.
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`,
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`The ALJ found (and the Commission affirmed, see infla section III) that the asserted
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`claims of the ’871 patent are invalid l.11'1d6I‘35 U.S.C. § 101 as directed to ineligible subject
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`matter. See Order No. 18 (May 24, 2018), afl'd, Comm’n Notice (June 27, 2019)? The
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`Commission terminated the ’4l9 patent from the investigation after Caterpillar withdrew its
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`allegations with respect to that patent. See Order No. 26 (July 5, 2018), unreviewed, Con1m’n
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`Notice (July 25, 2018). The Commission also terminated claim 25 of the ’693 patent from the
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`1 Wirtgen Group owns and controls a group of companies in the road construction industry
`including Wirtgen GmbH, Wirtgen America, and Vogele. See Complaint at 1]13 (EDIS Doc.
`No. 626840); RX-2C (Schmidt Direct Witness Statement (“DWS”) at Q/A 8); Respondents’
`Response to the Complaint (“Answer”) at 1113 (EDIS Doc. No. 632768). Wirtgen GmbH
`manufactures certain accused products (road-milling machines) outside of the United States and
`sells them for importation into the United States. See Complainants’ Post-Hearing Brief at 3
`(“CIB”) (EDIS Doc. No. 658733); Complaint at 1]11; Answer at1|l1. Wirtgen America sells
`the accused road-milling machines in the United States. See CIB at 3 (citing RX-2C, Schmidt
`DWS at Q/As .7-8); Complaint at 1114; Answer at '1]14. Vogele manufactures paving machines
`and was accused of infringing the ’871 patent, which the Commission found to be invalid. See
`CIB at 3, 6; Order No. 18 (May 24, 2018), afl’d, Comm’n Notice (June 27, 2019).
`2 Commissioner Schmidtlein dissents from the Commission’s decision to affinn Order No. 18
`and has filed a separate dissenting opinion.
`'
`'
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`2
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`_
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`investigation after Caterpillar withdrew its allegations as to that claim. See Order No. 38 (Oct.
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`16, 2018), unreviewed, Comm’n Notice (Nov. 9, 2018). Claims 1, 15-19, 24, 26-28, 36, and 38
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`(hereinafier, “the asserted claims”) of the ’693 patent (hereinafter, “the asserted patent”) remain
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`pending in this investigation?
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`-
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`The ALJ conducted an evidentiary hearing on September 25 and 26, 2018, and on
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`February 14, 2019, she issued her FID finding a violation of section 337.4 Specifically, the FID
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`finds that:
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`(1) certain accused products, namely the Wirtgen W 100 CFi, W 120 CFi, and W
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`130 CFi road milling machines (collectively, “the series 1810 machines”), infringe-the asserted
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`claims of the ’693 patent, but an older series of milling machines, namely, the Wirtgen W 100 Fi,
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`W 120 Fi, and W 130 Fi (collectively, “the series 1310 machines”), do not infringe the patent;
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`(2) all of the asserted claims, except claim 19 of the ’693 patent, are invalid as anticipated and/or
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`obvious over the asserted prior art; and (3) the domestic industry requirement is satisfied by
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`Complainants’ PM3XX domestic industry products. The ALJ also issued a Recommended
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`Determination (“RD”) recommending that the Commission issue a limited exclusion order
`.
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`(“LEO”) against Respondents’ infringing products and cease and desist orders (“CDO”) against
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`each Respondents The ALJ further recommended against setting a bond (i.e., a zero percent
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`'
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`bond) for infringing products imported during the period of Presidential review.
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`1
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`3 Complainants asserted the ’87l patent (not the ’693 patent) against respondent Vogele. See,
`e.g., CIB at 6 (“Caterpillar has not alleged that Vogele participates in the manufacture or
`importation of the Wirtgen-brand milling machines accused of infringing the ’693 patent.
`Vogele remains in the Investigation pending Commission review of the ’87l patent.”). The
`Commission’s finding of patent invalidity under 35 U.S.C. § 101 is dispositive as to Vogele.
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`4 See Hearing Tr. (EDIS Doc. Nos. 656926, 656927, 656968, 656969).
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`5 The FID and the RD appear, respectively, at pages 1-79 and 79-84 of the ALJ’s “Initial
`Determination on Violation of Section 337; Recommended Determination on Remedy and
`Bonding” (Feb. 14, 2019) (EDIS Doc. No. 667138).
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`3
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`PUBLIC VERSION
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`On February 27, 2019, both Complainants and Respondents filed petitions for review of
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`the FID.6 In particular, Complainants petitioned for review of the FID’s findings with respect
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`to:
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`(1) the construction of the claim tenn “a retracted position relative to said frame”; (2) the
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`prior art status of the Bitelli SF 102 C machine (RX-213) vis-a-vis the ’693 patent; (3) invalidity
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`yr
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`of certain asserted claims over Volpe SF 100 T47 (RX-802) in view of Ulrich U.S. Patent No.
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`3,633,292 (RX-946); (4) no invalidity of certain asserted claims over Gutman U.S. Patent No.
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`3,843,274 (RX-940)8; (5) non-infringement of the ’693 patent by the non-accused series 1310
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`machines; and (6) the FID’s failure to address indirect infringementeven though it was asserted
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`by Complainants and not contested by Respondents. Respondents petitioned for review of the
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`FID’s findings concerning:
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`(1) no invalidity of claim 19 over Volpe SF 100 T4 (RX-802) in
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`view of Ulrich (RX-946) and Busley WO>97/42377 (RX-950), and in particular, the FID’s
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`finding of no motivation to combine the references; and (2) the economic prong of the domestic
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`industry requirement. On March 7, 2019, the parties filed responses to each other’s petitions?
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`6 See Complainants’ Petition for Review of the Initial Determination (EDIS Doc. No. 668540)
`(hereinafter, “Complainants’ Pet.”); Respondents’ Petition for Conmrission Review of Initial
`Determination (EDIS Doc. No. 668520) (hereinafter, “Respondents’ Pet.”).
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`7 The Volpe SF 100 T4 machine is an earlier machine model of Bitelli SpA (“Bitelli”), the
`former owner and assignee of the ’693 patent, and is discussed in the specification of the ’693
`patent. See RX-802; FID at 37; JX-l, ’693 patent at 1:12-56.
`8 Complainants argued that the claims are not obvious over Gutman for the additional reason
`that Gutman does not disclose “a retracted position relative to said frame,” as properly construed
`See Complainants’ Pet. at 27.
`i
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`9 See Complainants’ Response to Respondents’ Petition for Review of the Initial Determination
`(EDIS Doc. No. 669352) (hereinafter, “Con1plainants’ Pet. Resp.”); and Respondents’ Response
`to Complainants’ Petition for Review of the Initial Determination (EDIS Doc. No. 669329)
`(hereinafter, “Respondents’ Pet. Resp.").
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`\,
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`4
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`.
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`PUBLIC VERSION
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`On March 18, 2019, the parties filed statements on the public interest pursuant. to
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`Commission Rule 210.50, 19 C.F.R. § 210.50.“) On March 29, 2019, non-party Roadtec, Inc.
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`(“Roadtec”) filed comments in response to the Federal Register notice requesting public interest
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`comments.“
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`See 83 Fed. Reg».10836-37 (Mar. 22, 2019). _
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`V
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`On April 12, 2019, the Commission issued a Notice determining to review the FID in
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`part. See 84 Fed. Reg. 16282-83 (Apr. 18, 2019). Specifically, the April 12, 2019 Notice
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`provided that:
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`[T]he Commission has determined to review the FID in part.
`Specifically, the Commission has determined to review the FID’s
`findings with respect to:
`(1) claim construction of the term “a
`retracted position relative to said frame” and any related findings
`including with respect to infringement, invalidity, and technical
`_prong of the domestic industry requirement; (2) infringement of the
`asserted method claims, i.e., claims 17-19, 24, 26-28, and 38 of the
`’693 patent; (3) invalidity of certain asserted claims of the ’693
`patent over Volpe SF 100 T4 in view of U.S. Patent No. 3,633,292
`(Ulrich); (4) no invalidity of certain asserted claims over U.S. Patent
`No. 3,843,274 (Gutman) alone or in combination with other prior
`art; and (5) no invalidity of claim 19 over Volpe SF 100 T4 in view
`of Ulrich and WO 97/42377 (Busley). The Commission has
`determined not to review the remainder of the FID.
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`‘
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`-
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`See id. The Commission did not request briefing from the parties on the issues under review but
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`solicited written submissions only on the issues of remedy, the public interest, and bonding. See
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`id.
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`I
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`1° See Complainants’ Statement on the Public Interest (EDIS Doc. No. 670334) (hereinafter,
`“Complainants’ PI Br.”); and Respondents’ Statement on the Public Interest (EDIS Doc. No.
`670324) (hereinafier, “Respondents’ PI Br.”).
`H See Roadtec’s Statement on the Public Interest (EDIS Doc. No. 671706) (hereinafter,
`“Roadtec’s PI Br.”).
`I
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`5
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`PUBLIC VERSION
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`A
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`On April 30, 2019, the parties filed written submissions” in response to the April 12,
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`2019 Notice, and on May l0, 2019, the parties filed responses to each other’s submissions.“
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`B.
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`The Asserted Patent ~
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`The ’693 patent, titled “Milling Machine with Re-Entering Back Wheels,” issued on
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`November 28, 2006, and claims priority to a foreign patent application filed in Italy on April 27,
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`2001, and an international application filed L1l'1d61‘the Patent Cooperation Treaty on April 26,
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`2002.14 The ’693 patent identifies Gregory Henry Dubay, Michele Orefice, and Dario Sansone
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`of Italy as inventors and Bitelli SpA,‘5 an Italian company, as the assignee. See JX-1.
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`The ’693 patent generally relates to “work machines for the treatment of roadway
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`surfaces, and more particularly to a planer or milling machine for asphalt and concrete.” See
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`JX-1 at 1:6-8; id. at Fig. l (reproduced below).l6‘
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`i
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`12See Complainants’ Brief in Response to the Commission Notice (EDIS Doc. No. 674531)
`(hereinafter, “Complainants’ Remedy Br.”); and Respondents’ Statement on Remedy, the Public
`Interest, and Bonding (EDIS Doc. No. 674508) (hereinafter, “Respondents’ Remedy Br.”).
`
`13See Complainants’ Reply Brief in Response to the Commission Notice (EDIS Doc. No.
`675627) (hereinafter, “Complainants’ Remedy Resp.”); and Respondents’ Reply Statement on
`Remedy, the Public Interest, and Bonding (EDIS Doc. No. 675643) (hereinafier, “Respondents’
`Remedy Resp.”).
`'
`
`‘4 The effective date of the ’693 patent pre-dates the America Invents Act (“AIA”) enacted by
`Congress on September 16, 2011. Thus, the pre-AIA version of the Patent Act, 35 U.S.C. § 1 er
`seq., applies to the ’693 patent.
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`15Respondents note that Caterpillar acquired Bitelli in 2000. See Respondents’ Post-Hearing
`Brief at 2 n.l (“RIB”) (EDIS Doc. No. 658755).
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`16The FID explains that “road milling machines, also known as ‘cold planers,’ . . . are used to
`remove asphalt and concrete on road surfaces” and that “[m]illing is a step in the process of
`resurfacing a road Wherepart of the existing pavement is removed to provide a textured surface
`for a new layer of pavement.” See FID at 2 (citations omitted).
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`6
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`

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`More specifically, as illustrated in Figures 2 and 3\of the ’693 patent (reproduced below),
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`the claimed invention relates to a work machine including:
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`(1) a frame (2) supported by a
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`plurality of wheels or tracks (5), at least some of which are associated with respective lifting
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`columns adapted to raise and lower the frame relative to the respective wheels or track; (2) a
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`work tool supported by the frame (2); (3) a drive mechanism adapted to rotate the work tool and
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`at least one of the wheels or tracks (5); and (4) an articulation apparatus (10) using a first
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`actuator (20) and a pivoting support arm (11) to move one of the wheels or tracks (5) between a
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`projecting position and a retracted position relative to the frame, and a second actuator (21)
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`adapted to rotate the wheel or track (5) about a vertical axis (Z). See, e.g., id. at Abstract, 9:24­
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`44 (claim l), 2:36-49, Fig. 2 (reproduced below), 2:60-64 (“FIG. 2 is a schematic top plan view
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`. . . of a detail of a cold planer similar to the one of FIG. 1 showing an articulation apparatus of a
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`preferred embodiment of the present invention with a rear wheel arranged in a projecting
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`position relative to the frame”); 2:65-67 (“FIG. 3 is a schematic top plan view similar to FIG. 2
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`with the rear wheel arranged in a retracted position relative to the frame").
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`».
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`7
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`PUBLIC VERSION
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`The ’693 patent explains that the claimed work machine allows “the automated
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`movement to position a wheel or track assembly either projecting or retracted relative to the
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`frame [to] occur[] with a greater stability in comparison with known machines,” and “is less
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`prone to wear, requires less maintenance, and is easier to manufacture than known machines.”
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`See id. at 2:24-30.
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`In addition, the specification continues, the “change of rotational direction of
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`the wheel or track about a vertical axis is facilitated in a compact and robust manner to adapt for
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`the changing steering requirements when moving the wheel or track fiom the projecting to the
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`retracted position relative to the frame and vice versa.” See id. at 2:30-35.
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`Case 1:17-cv-00770-JDW-MPT Document 118-10 Filed 11/17/22 Page 10 of 75 PageID #:
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`PUBLIC VERSION '
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`C._
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`Caterpillar’s Domestic Industrv Products
`
`As noted in the FID, the domestic industry products are Caterpillar’s PM3XX series cold
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`planer machines, which include model numbers PM3 10, PM312, and PM313. See FID at 3
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`(citing CX-401C (Engelmannn DWS) at Q/A 12). Caterpillar contends that the domestic
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`industry products practice claims l-3, 5, 6, l7-19, 24, and 28 of the ’693 patent. See id. at 64
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`(citing CX-399C (Reinholtzls DWS) at Q/A 60-164).
`
`D.
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`Wirtgen’s Accused Products
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`'
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`The accused products are Wirtgen’s series 1810 compact milling machines, model
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`numbers W 100 CFi, W 120 CFi, and W 130 CFi.19 See FID at 3 (citing CX-399C (Reinholtz
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`DWS) at Q/A 170; RX-2C (Schmidtzo DWS) at Q/A 23).
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`In addition, as noted in the FID,
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`17Erie Engelmann is an employee and fact witness for Complainants.
`'3 Dr. Charles Reinholtz served as Complainants’ technical expert in this investigation.
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`19Complainants also accused certain paving machines manufactured by Vdgele of infringing the
`’87l patent, which the Cormnission found to be invalid. See CIB at 3; supra note l.
`
`2° Jan Schmidt is an employee and fact witness for Respondents.
`
`9
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`

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`PUBLIC VERSION
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`Wirtgen has also identified a prior generation of milling machines, the 1310 series, with model
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`numbers W 100 Fi, W 120 Fi, and W130 Pi.“ See id. (citing RX-2C (Schmidt DWS) at Q/A
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`23)_22
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`~
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`x
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`II.
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`STANDARD ON REVIEW
`
`Commission Rule 210.45(c) provides that “[o]n review, the Commission may affinn,
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`reverse, modify, set aside or remand for further proceedings, in whole or in part, the initial
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`determination of the administrative law judge” and that “[t]he Commission also may make any
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`findings or conclusions that in its judgment are proper based on the record in the proceeding.”
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`See 19 C.F.R. § 210.45(c).
`
`In addition, as explained in Certain Polyethylene Terephlhalate
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`Yarn and Products Containing Same, “[o]nce the Commission determines to review an initial
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`determination, the Commission reviews the determination under a de nova standard.” Inv. No.
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`337-TA-457, Comm’n Op., 2002 WL 1349938, *5 (June 18, 2002) (citations omitted). This is
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`“consistent with the Administrative Procedure Act which provides that once an initial agency
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`decision is taken up for review, ‘the agency has all the powers which it would have in making
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`the initial decision except as it may limit the issues on notice or by rule.
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`M:
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`Id. (citing 5 U.S.C.
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`'
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`§ 557(b)).
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`1
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`‘
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`2‘ The 1310 series machines were not accused by Complainants, but Respondents requested that
`the ALJ adjudicate infringement with respect to those machines.
`_
`I
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`] but the FID declined to adjudicate
`22 Wirtgen further identified [
`those [
`] on the basis that “[they] have not -beenimplemented in any imported articles,” and
`as such, “[they] are not ripe for a determination of infringement or non-infringement in this
`investigation.” See FID at 24-25. Wirtgen did’not petition for review of the FID’s findings
`with respect to the [
`], and the Commission determined not to review
`this issue.
`
`10
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`PUBLIC VERSION
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`III.
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`DISCUSSION - ’871 PATENT
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`The Commission affirms Order No. 18 in its entirety for the reasons provided in the
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`Order.” First, the Commission agrees with the ALJ’s holding that the asserted claims of the
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`’87l patent are directed to an abstractidea. Under step one of the Alice analysis,“ the Federal
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`Circuit has held that claims directed to “collecting information, analyzing it, and displaying
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`certain results of the collection and analysis,” “fall into a familiar class of claims ‘directed to’ a
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`patent-ineligible concept.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
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`Cir. 2016). The asserted claims here are drawn to the abstract idea of automating a paving
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`machine by using conventional electronic components that substitute for human control of the
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`machine’s functions. See Order No. l8 at ll.
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`Specifically, the claims are directed to the
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`abstract idea of automating the settings of a paving machine’s screed assembly by using
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`conventional electronic components that substitute for a user’s selection of the machine’s
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`settings by sensing, storing, and recalling the user’s earlier choice of settings in order to
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`automatically adjust the screed according to the stored user setting data. As the AL] found,
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`simply limiting the abstract idea to paving machines does not make the idea patentable. See id.;
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`Alice, 134 S. Ct. at 2358 (“Flook stands for the proposition that the prohibition against patenting
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`abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular
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`teclmological environment”)
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`(citation omitted); Thales VisionixInc. v. United States, 850 F.3d
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`1343, 1346 (Fed. Cir. 2017) (“First, we ‘detennine whether the claims at.issue are directed topa
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`patent-ineligible concept.’
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`If so, we ‘examine the elements of the claim to determine whether it
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`23 Commissioner Schmidtlein dissents from the Commission’s decision to affirm Order No. 18
`and has filed a separate dissenting opinion.
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`1
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`24 Alice Corp. Ply. v. CLS Bank 1nt’l, 134 S. Ct. 2347, 2355-57 (2014) (“Alice”)
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`contains an ‘inventivelconcept’ sufficient to ‘transform’ the claimed abstract idea into a patent­
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`eligible application.”’)
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`(quoting Alice, 134 S. Ct. at 2355, 2357).
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`Likewise, the ALJ found that “the fact that the asserted claims are directed to physical V
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`phenomena,” e.g., a paver that automatically adjusts its screed assembly based on stored user
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`setting data, “is beside the point.” Order No. 18 at 16 (quoting Smart Sys. Innovations, LLC v.
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`Chicago TransitAuth., 873 F.3d 1364, 1373 (Fed. Cir. 2017) (quoting Alice, 134 S. Ct. at 2358)).
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`The Court in Smart Systems rejected the patent-holder’s argument that the claimed inventions are
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`not abstract because they “operate in the tangible world” by allowing access through locked
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`turnstiles in a transit system based on acquired bankcard data; instead, the Court held the claims
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`to be patent ineligible because “the claims are directed to the collection, storage, and recognition
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`of data.” 873 F.3d at 1371-72 (“We have detennined that claims directed to the collection,
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`storage, and recognition of data are directed to abstract ideas.”) (citing Elec. Power, 830 F.3d at
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`1353; Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat ’lAss ’n, 776 F.3d 1343,
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`1347 (Fed. Cir. 2014); Intellectual Ventures 1 LLC v. Capital One Fin. C0rp., 850 F.3d 1332,
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`1340 (Fed. Cir. 2017)).
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`Caterpillar relies on Diamond v. Diehr, 450 U.S. 175 (1981), Erzfish,LLC v. Microsoft
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`Corp., 822 F.3d 1327 (Fed. Cir. 2016), and Thales. But those cases are readily distinguishable.
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`In Diehr, while the claimed invention relied on a mathematical formula, the Arrhenius equation,
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`the patented process utilized the Arrhenius equation to transform uncured synthetic rubber “into
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`a different state or thing.” Diehr, 450 U.S. at 184. Among other things, “[t]he invention in
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`Diehr used a ‘thermocouple’ to record constant temperature measurements inside the rubber
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`mo1d——something‘the industry ha[d] not been able to obtain.”’ Alice, 134 S. Ct. at 2358.
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`Thus, the invention at issue in Diehr was patentable because it improved an existing
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`technological process.
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`Ia’. But even if the invention in Diehr were directed to an abstract idea,
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`it included an inventive concept. Specifically, the claims in Dfehr applied a mathematical
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`formula, which was not patentable alone, in a very particular and specific way—to a processof
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`curing raw rubber in a mold according to a specific series of steps including constantly
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`measuring the temperature of the mold in real time for re-use in the fonnula to calculate the
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`remaining curing time.‘ Diehr, 450 U.S. at 177-78, 187.
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`In Enfish, the Court found that the claims at issue were “directed to an improvement in
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`the functioning of a computer” and hence eligible for patent protection under section 101.
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`Enfish, 822 F.3d at 1338; see also id. at 1337 (“The specification . . . teaches that the self- _
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`referential table functions differently than conventional database structures”).
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`Regarding Thales, the patent claimed a technological advancement in determining the
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`position and orientation of an object on a moving platform. Thales, 850 F.3d at 1345. The
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`prior art used inertial sensors that measured the position_ofthe object and platform relative to the
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`earth. The invention in Thales, used those same sensors, but in an unconventional manner.
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`The sensors directly measure the gravitational field in the platform frame and then calculate
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`position information relative to the frame of the moving platform.
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`Id.
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`In’contrast to these
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`cases, as disclosed by the specification, the inventions of the ’871 patent here use generic and
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`conventional means in a conventional way and do not solve a technological problem or advance
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`existing technology in any way.
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`'
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`As the ALJ observed, the elements of the machine claimed in the ’87l patent are
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`described at a high level of generality and as conventional components. ‘See Order No. 18 at 12
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`(citing ’87l patent at col. 3, ll. 8-10 (“While an endless path conveyor is shown, one or more
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`feed augers or other material feed components may be used instead of or in addition to the
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`conveyor”); id. at co]. 3, ll. 49-51 (“The tow arm actuators may be any suitable actuators, such
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`as, for example, hydraulic cylinders”); id at col. 3, ll. 58-61 (“The screed assembly may be any
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`of a number of configurations known in the art such as a fixed width screed, screed extender or a
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`multiple section screed that includes extensions.”); id. at col. 4, 11.27-29(“The method by which
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`a screed assembly can be adjusted to control the height of the upper surface of the paving
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`material is well known.”)).
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`As the ALJ further observed, “[t]he critical element of the invention consists of the
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`generic electronic controller that permits coordination and control of ‘the various systems and
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`components associated with the paving machine including the screed assembly.” Order No. 18
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`at 12 (citing ’87l patent at col. 5, ll. 1-3). The specification discloses that the controller permits
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`“operators of the paving machine to enter and receive information concerning operation of the
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`paving machine . . . .” Id. (citing ’87l patent at col. 5, ll. 28-32).
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`“The controller also permits
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`automation of the machine’s functions, such as pile height or conveyor speed.”
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`Id. (citing ’87l
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`patent at col. 5, ll. 62-65).
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`“The controller ‘may be configured to detennine pa\n'ng output data
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`such as mat thickness, mat smoothness, mat temperature, mat elevation, and mat cross-slope
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`from infonnation it receives from various sensors associated with the paving machine.”
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`Id.
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`(citing ’87_lpatent at col. 6, ll. 2-6).
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`“The controller also may ‘communicate with various
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`sensors on the screed assembly.”
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`Id. (citing ’87l patent at col. 6, ll. 21-22).
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`“To provide
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`fmther control over the paving process, the controller may be in communication with a variety of
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`other mechanisms of thepaving machine. . . .” Id. at 12-13 (citing ’87l patent at col. 6, l. 58­
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`col. 7, 1. 5).
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`As the ALJ correctly detennined, “[t]he specification’s focus on conventional elements
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`and components is consistent with the generality of claim 1.” Order No. 18 at 13. “Claim l
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`describes a ‘paving machine’ that is ‘configured’ to pemiit adjustments to the screed assembly.”
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`Id. (citing ’87l patent at col. 9, 11.51-54). “The machine has ‘actuators’ associated with
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`adjustable components of the screed assembly.”
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`Id (citing ’87l patent.at col. 9, ll. 56-60).
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`“The machine has sensors to sense the configurations of the screed assembly.” Id. (citing ’87l
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`patent at col. 9, ll. 61-64). “The machine has an ‘input device’ to allow an operator to enter
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`commands.”
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`Id. (citing ’87l patent at col. 9, ll. 65-67).
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`“The machine has a ‘controller’ in _
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`communication with the other generic components that can save commands in memory and
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`recall them later, thus making adjustments to the screed assembly components ‘automatically’ to
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`correspond with the recalled information.”
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`Id. (citing ’87l patent at col. 10, ll. 1-25).
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`In short,
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`the ’871 patent does not claim or describe as innovative any feature of either the paving machine,
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`its adjustable screed assembly components, or the electronic controller that is disclosed.
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`Instead, the ’87l uses conventional sensors, actuators, and controllers in their ordinary manner in
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`a conventional paving machine.
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`Second, we also affirm the ALJ’s holding that the asserted claims of the ’87l patent lack
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`an inventive concept. Under Alice Step two, tribunals must consider the claims “both
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`individually and as an ordered combination,” to see whether they contain “an,inventive set of
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`components or methods,” “inventive programming,” or an inventive approach in “how the.
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`desired result is achieved.” Elec. Power, 830 F.3d at 1353-5,5. The Federal Circuit has also
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`held that the machine-or-transformation test may be helpful in deciding eligibility at step two.
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`Smart .5)/s.,873 F.3d at 1375 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
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`Cir. 2014)). Under that test, patentability may be conferred on claims that transform “a
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`particular article into a different state or thing.” Ultramercial, 772 F.3d at 716. However, as
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`discussed above, the ’87l patent recites the use of standard electronic components to improve the
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`"
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`functionality of a paving machine, and the patent discloses no innovative system for
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`v
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`.
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`implementing the invention. Claim 1 describes and claims a generic controller that functions in
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`a conventional wayto collect, manipulate, and communicate data for adjusting conventional
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`screed assembly components using the recalled user setting data.
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`In addition, unlike Diehr, the invention disclosed in the ’871 patent does not transform
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`anything.
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`See Order No. 18 at 20-21. For example, “[t]he patent does not -identify any
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`mechanical distinction between the screed assembly in the patented invention and screed
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`assemblies in other paving devices.” Id.
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`Instead, “the invention focuses on the electronic
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`elements,” which according to the patent improves speed and accuracy of setting up the screed.
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`Id. at 21. That is not enough to render the invention patent eligible. See id. (citing Intellectual
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`Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (“Nor, in
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`addressing the second step‘of Alice, does claiming the improved speed or efficiency inherent
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`with applying the abstract idea on a computer provide a sufficient inventive concept.”)).
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`* Caterpillar, relying on Berkheimer v. HP 1nc., 881 F.3d 1360 (Fed. Cir. 2018), contends
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`that the ID violates summary determination standards by resolving factual disputes against non­
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`movant Caterpillar in determining that the claims are conventional and that “whether a claim
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`element or combination of elements is well-understood, routine and conventional to a skilled
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`artisan in the relevant field is a question of fact.” Caterpillar Pet. at 17 (EDIS Doc N0. 646749)
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`(citing Berkheimer, 881 F.3d at 1368). But Berkheimer holds that the second step of the Alice
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`‘testis satisfied “when the claim limitations ‘involve more than performance of well-understood,
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`routine, [and] conventional activities previously known to the industryfi” Berkheimer, 881 F.3d
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`at 1367 (quoting Content Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S. Ct. at 2359)).
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`As discussed above, the specification disclosesiithatthe claimed invention uses well-und