Case 1:17-cv-00770-JDW-MPT Document 118-11 Filed 11/17/22 Page 1 of 31 PageID #:
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`EXHIBIT K
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`Case 1:17-cv-00770-JDW-MPT Document 118-11 Filed 11/17/22 Page 2 of 31 PageID #:
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.
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`Defendant/Counterclaim-Plaintiff.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Case No. 1:17-cv-00770-JDW-MPT
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`JURY TRIAL DEMANDED
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`DECLARATION OF JEFFREY L. STEIN, PHD., IN SUPPORT OF
`PLAINTIFF/COUNTERCLAIM-DEFENDANT WIRTGEN AMERICA INC.’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF REGARDING U.S. PATENT NO.
`9,975,538
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`Case 1:17-cv-00770-JDW-MPT Document 118-11 Filed 11/17/22 Page 3 of 31 PageID #:
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`PRIVILEGED & CONFIDENTIAL
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1 
`I. 
`II.  Qualifications and Experience ........................................................................... 1 
`III.  Materials Considered ......................................................................................... 4 
`IV.  Relevant Legal Standards .................................................................................. 5 
`A.  Level of Ordinary Skill .................................................................................. 5 
`B.  Claim Construction ........................................................................................ 6 
`V.  Technology Background .................................................................................... 7 
`VI.  The ’538 Patent ................................................................................................ 12 
`A.  Specification ................................................................................................ 12 
`VII.  CLAIM INTERPRETATION (’538 PATENT) .............................................. 16 
`A. 
`“a variable transmission” ............................................................................. 16 
`B. 
`“receiving a desired rotor speed” / “to maintain a desired rotor speed” ...... 21 
`C. 
`“predefined efficiency points” ..................................................................... 24 
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`i
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`Case 1:17-cv-00770-JDW-MPT Document 118-11 Filed 11/17/22 Page 4 of 31 PageID #:
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`I, Jeffrey L. Stein, declare as follows:
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`I.
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`Introduction
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`1.
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`I have been retained by plaintiff/counterclaim-defendant Wirtgen America, Inc. (“Wirtgen
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`America”) to evaluate U.S. Patent Nos. 9,975,538 (“the ’538 Patent”), titled “Milling Machine
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`Fuel Efficiency Control System,” which I understand is asserted by Caterpillar, Inc. (“Caterpillar”)
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`in this case. I submit this declaration in support of Wirtgen America’s Responsive Claim
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`Construction Brief.
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`2.
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`I am being compensated for my time spent on this matter at the rate of $525.00 per hour
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`for the time I spend in connection with the proceeding. My compensation is not dependent in any
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`way on the substance of my opinions or in the outcome of this proceeding.
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`II. Qualifications and Experience
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`3.
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`4.
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`A copy of my curriculum vitae is provided along with this declaration. Ex. N.
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`I earned a Ph.D. in Mechanical Engineering from the Massachusetts Institute of
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`Technology in 1983, as well as Masters of Science and Bachelors of Science degrees in Mechanical
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`Engineering from the same university in 1976. I was a Registered Professional Engineer from
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`1990-2020.
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`5.
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`My academic and professional experience includes modeling of dynamic systems and
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`modeling, analysis, design, and control of mechanical systems and vehicle control systems. This
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`experience has included the design and control of machine powertrain systems, such as the internal
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`combustion engine and transmission systems, of machines.
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`6.
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`I am currently a Professor of Mechanical Engineering at the University of Michigan, where
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`I have been a Full Professor since 1996 and held Assistant Professor and Associate Professor
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`positions between 1983 and 1996. Additionally, I held the Associate Director position at
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`University of Michigan’s Automotive Research Center (“ARC”) from 1994-2009. I have studied,
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`taught, and/or researched vehicle technology for over 40 years.
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`7.
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`In my capacity as a Professor, I teach undergraduate and graduate courses in mechanical
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`design, dynamics, systems and control engineering. My research and teaching has focused on
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`system dynamics, control, machine diagnostics, machine design and control, computer-assisted
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`modeling and design, vehicle dynamics (for traditional combustion and hybrid vehicles), as well
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`as the control of artificial limbs. Examples of my research are in the field of vehicle engineering,
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`and include projects specializing in algorithms for deducing or reducing proper dynamic system
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`models to design and control autonomous, resilient, and sustainable systems with a focus on
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`transportation. Some projects have involved modeling predictive control for autonomous vehicles,
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`hybrid and electric vehicles, and vehicle to grid integration using fuel economy and exhaust
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`emissions metrics. Since 2012, I have also held the role of Professor in the University of Michigan
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`Ann Arbor’s Design Science Ph.D. Program. At ARC, I was the leader of the Dynamics and
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`Controls of Vehicle and Mobile Robotics Thrust Area and my research included modeling and
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`simulation of ground vehicles, including heavy duty military vehicles, hybrid and autonomous
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`vehicles, and vehicle batteries.
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`8.
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`In addition to being the ARC Associate Director, I was also a Principal Investigator (PI) of
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`various projects and I have developed computer-based methods for facilitating the design
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`evaluation of automotive powertrains, including hybrid electric powertrains, as well as four- and
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`six-wheel drive vehicles. I have also developed algorithms for controlling both the steering and
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`propulsion of autonomous and semi-autonomous vehicles.
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`9.
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`Between 1983 and 1991, I also worked as an independent consultant concentrating in the
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`area of design and risk analysis of mechanical systems and manufacturing machines. Much of this
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`work is particularly germane to the area of vehicle engineering. Some examples include: hybrid
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`electric vehicles, automated mechanical transmissions for heavy duty trucks, four wheel drive
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`vectoring and transfer cases for on-demand, four-wheel drive vehicles.
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`10.
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`I have received numerous awards as a result of my work at the University of Michigan.
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`Most recently, in 2020, I received the American Society of Mechanical Engineers (“ASME”)’s
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`Dynamic Systems and Control Division’s Henry M. Paynter Outstanding Investigator Award for
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`“seminal contributions to the basic engineering science of proper modeling of physical systems
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`with a broad range of applications including rehabilitation, transportation and manufacturing
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`engineering.” In 2017, I won an award for Best Paper for ASME’s Automotive and Transportation
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`Systems’ American Control Conference for the paper “Moving Obstacle Avoidance for Large
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`Size, High-Speed Autonomous Ground Vehicles.” I have also supervised numerous student papers
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`that have gone on to win awards from ASME and other institutions. In 2012, I received the ASME
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`Dynamics Systems and Control Division’s Michael J. Rabins Leadership Award for “distinguished
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`and steadfast leadership within the Dynamics Systems and Control Division.”
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`11.
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`In 2011, I was invited to speak at the congressional office building for briefing on “The
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`Road to the New Energy Economy: Electric Cars,” and in 2010, I was a plenary speaker at the
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`American Association for Advancement of Science’s program on Green Mobility. In both of these
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`talks I emphasized the fuel economy gained by decoupling the engine from the output and thus
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`being able to run the engine in its “sweet spot.” In 2015, I served as a member and Chair of the
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`ASME Energy and Environmental Standards Advisory Board from 2011-2021.
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`12.
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`I have authored with my students and colleagues approximately 80 journal articles,
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`including many that are related to automotive engineering. I have also authored with my students
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`and colleagues over 130 referenced conference papers, including many that are related to
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`automotive engineering. These publications included articles focused on large trucks as well as
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`passenger automobiles and hybrid vehicles. For example, in 2001, I co-authored an article entitled
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`“Design of an Advanced Heavy Tactical Truck: A Target Cascading Case Study,” for the 2001
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`Society of Automotive Engineers Journal of Commercial Vehicles. Similarly, in 2003, I co-
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`authored a paper on ‘Generating Proper Dynamic Models for Truck Mobility and Handling,” for
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`a Special Issue on Advanced Vehicle Design and Simulation of the International Journal of Heavy
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`Vehicle Systems.
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`13.
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`In light of my extensive training and experience, I consider myself an expert in the design
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`and control of machine powertrain systems, which includes the internal combustion engine and
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`transmission systems of machines such as those described in the ’538 Patent.
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`III. Materials Considered
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`14.
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`In formulating my opinions, I have relied upon my training, knowledge, and experience
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`that are relevant to the ’538 patent. Furthermore, I have specifically considered the following
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`documents, in addition to any other documents cited in this declaration:
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`Exhibit
`No.
`B
`D
`L
`M
`N
`O
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`P
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`Q
`R
`S
`T
`U
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`Description
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`U.S. Patent No. 9,975,538
`U.S. Patent No. 9,975,538 file history
`U.S. Patent No. 8,465,105 to Parker et al. (“Parker”)
`AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (3d ed. 1996)
`Curriculum Vitae of Jeffrey Stein
`U.S. Patent No. 8,622,871 to Hoff (“Hoff”)
`Eli Orshansky & William E. Weseloh, Characteristics of Multiple Range
`Hydromechanical Transmissions, SAE International, 81 SAE TRANSACTIONS
`720447 (1972)
`U.S. Patent Pub. No. 2015/0091363 to Reuter et al. (“Schomaker”)
`U.S. Patent No. 9,864,347 to Laux et al. (“Laux”)
`U.S. Patent Pub. No. 2009/0118912 to Hugenroth et al. (“Hugenroth”)
`Norman H. Beachley & Andrew A. Frank, Continuously Variable Transmissions
`Theory and Practice (Lawrence Livermore Laboratory, Report UCRL-15037, 1979)
`U.S. Patent Pub. No. US 2010/0014917 A1 to Willis et al. (“Willis”)
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`4
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`Hoy et al., Agricultural Industry Advanced Vehicle Technology: Benchmark Study
`for Reduction in Petroleum Use, at 8 (Idaho Nat’l Lab., Paper No. INL/EXT-14-
`33118, 2014).
`U.S. Patent No. 8,806,864 to Ishii (“Ishii”)
`John Deere, Transmissions, Infinitely Variable Transmission, at 1 (2009),
`https://web.archive.org/web/20090507121704/
`http://salesmanual.deere.com/sales/salesmanual/en_NA/tractors/
`2009/feature/transmissions/8030/8030_option_code_1127_1137_ivt_trans.html
`Massey Ferguson, MF-8600: A Powerful Future in Farming, 5 Models: 270 to 370
`HP, at 18, 38 (2011)
`U.S. Patent No. 9,656,656 to Xing et al. (“Xing”)
`U.S. Patent No. 8,483,927 to Matsuzaki et al. (“Matsuzaki”)
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`Case IH Agriculture, New Case IH CVT Transmissions: Smooth, Stepless, Efficient
`Power, FARM FORUM 4, 16 (Fall 2009)
`Challenger, The New MT600C Series, 8–9, 24 (2009)
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`V
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`W
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`X
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`Y
`Z
`AA
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`BB
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`CC
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`IV. Relevant Legal Standards
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`15.
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`In forming my opinions, I have relied upon various legal principles (as explained to me by
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`Wirtgen America’s counsel). My understanding of these principles is summarized below.
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`A. Level of Ordinary Skill
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`16.
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`I understand that a claim must be analyzed from the perspective of a person of ordinary
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`skill in the art (POSITA) at the time the claimed invention was allegedly invented by the patentee.
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`Wirtgen America’s counsel has informed me to consider the time period before May 18, 2015, as
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`the earliest potential date of invention of the claims of the ’538 Patent.
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`17.
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`In ascertaining the appropriate level of ordinary skill in the art of a patent, I understand that
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`several factors should be considered, including (1) the types of problems encountered in the art;
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`(2) the prior art solutions to those problems; (3) the rapidity with which innovations were made;
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`(4) the sophistication of the technology; and (5) the education level of active workers in the field
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`of the patent.
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`18.
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`I further understand that a POSITA is a person who is presumed to be aware of the pertinent
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`art as of the time of the alleged invention, of conventional wisdom in the art, and is a person of
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`ordinary creativity. Accordingly, a POSITA of the ’538 Patent would have had general knowledge
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`of machine powertrains, including internal combustion engines, transmissions, differentials,
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`controllers and other powertrain components, as of May 18, 2015.
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`19.
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`Based on my experience and my understanding of the legal principles summarized here, I
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`believe that in the context of the ’538 Patent a POSITA shortly before May 18, 2015, would have
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`had a bachelor’s degree in mechanical engineering or an equivalent degree and two to five years
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`of experience working on designing or developing machine powertrains in which a controller
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`controls a powertrain’s internal combustion engine, coupled transmission and other powertrain
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`components. Additional education may substitute for lesser work experience and vice versa. Also,
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`a POSITA may have worked as part of a multidisciplinary team and drawn upon not only their
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`own skills, but of others on the team, e.g., to solve a given problem. For example, an electrical or
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`computer engineer may have been part of the team.
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`B. Claim Construction
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`20.
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`I have been provided certain legal principles relating to the construction of patent claims.
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`In conducting my analysis set forth in this declaration, I have been guided by these principles. I
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`understand that “claim construction” is the interpretation of the meaning of patent claims. I
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`understand that the parties have exchanged lists of claim elements that may need to be construed,
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`as well as proposed constructions of those elements. I understand that claim construction is a matter
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`for the Court but it has not yet construed any of the disputed claim elements.
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`21.
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`I understand that words of a claim are generally given their ordinary and customary
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`meaning, which is the meaning the term or phrase would have to a skilled artisan at the time of the
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`invention. I understand that both intrinsic and extrinsic evidence can be used to assist in
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`understanding the meaning of a claim. Intrinsic evidence includes the claim language, language in
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`other claims of the patent, the specification, and the prosecution record. I further understand that,
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`unless required by the claim language or specification, claims should generally not be limited to
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`embodiments in the specification, including preferred embodiments. I understand that extrinsic
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`evidence, which consists of all evidence external to the patent and prosecution history including
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`expert and inventor testimony, dictionaries, and learned treatises, may also be relevant to claim
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`construction.
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`22.
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`I understand that claims can include a preamble, a connecting term or transition word, such
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`as comprising, and the body of the claim which follows the transition word. I also understand that
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`the preamble can inform the scope and meaning of the claim such as when it recites essential
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`structure or is necessary to give life, meaning, and vitality to the body of the claim.
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`23.
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`I have been asked to review the claims and ascertain the meaning of the claims from the
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`perspective of a skilled artisan and to review the proposed claim constructions provided by both
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`parties as expressed in the Joint Claim Construction Chart for Caterpillar’s Counter-Asserted
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`Patents. My opinions on claim construction expressed in this declaration are from the perspective
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`of, and based upon the knowledge of, a skilled artisan at the time of the invention and are consistent
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`with my understanding as stated above.
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`V. Technology Background
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`24.
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`A milling machine or cold planer is a work machine with a powered rotatable drum
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`mounted underneath the vehicle’s chassis which cuts or grinds away a roadway surface. These and
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`other industrial machines used in construction, mining, agriculture, and transportation—such as
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`vehicles, tractors, harvesters, and road reclaimers—were known to have powertrains which
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`consisted of a prime mover, such as an internal combustion engine, and a transmission that coupled
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`the engine output to power the machine’s wheels or tracks, as well as accessories and implements
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`such as milling drums or rotors, cutters, and power take-off devices. See, e.g., Ex. O, 2:43-61,
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`3:18-35; Ex. P, 2153–54; Ex. L, 4:50-64; Ex. Q, ¶¶[0032]-[0034]; Ex. R, 1:23-32; Ex. S, ¶¶[0028]-
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`[0030]; Ex. T, 1–4. The machines could also include a control system to control milling drum
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`speed and the machine’s travel speed. Ex. U, ¶¶[0003]-[0004], [0017], [0023]. Some control
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`systems included a controller that received operator inputs from a speed selector to select a desired
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`milling drum speed and to control the engine or a transmission in the machine so that the actual
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`rotor speed generally equaled the desired milling drum speed. Ex. U, ¶¶[0017]-[0018], [0020]-
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`[0021]; Ex. R, 9:29-46, 11:24-20.
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`Ex. R, Fig. 1 (annotated).
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`25.
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`At the time of the ’538 patent, some older milling machines used multi-speed transmissions
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`to enable operators to change milling drum speed independently of the engine. But multi-speed
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`transmissions were disfavored because they typically did not contain a sufficient number of
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`different transmission speed ratios and required the milling machines to work in a very narrow
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`speed range. Ex. L, 2:50-65. Their manual operation and large step ratios forced their engines to
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`be operated at suboptimal speeds with respect to engine efficiency. Ex. V, at 8. Operating milling
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`machines was costly and customers demanded milling machines that minimized fuel consumption
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`whenever possible, while maintaining desired milling performance. Ex. R, 1:33-37; Ex. L, 3:18-
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`23, 3:54-59. Accordingly, later milling machines began to use transmissions that provided more
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`and larger ranges of speed ratios, such as multispeed automatic transmissions, powershift
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`transmissions, continuously variable transmissions (“CVTs”) and infinitely variable transmissions
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`(“IVTs”), as distinct from multi-speed transmissions with insufficient ratios. Ex. L, 4:67-5:7. As
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`more gear ratios are added to the transmission and the numerical difference between speed ratios,
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`also known as the step ratio size or simple the step size, become smaller, the opportunity to
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`maintain operation at peak engine efficiency grows. This concept leads to the evolution of a step-
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`less or variable transmission with an infinite number of ratios. Two common types include
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`infinitely or continuously variable transmissions (CVTs) which allow the engine to work in a
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`narrow, yet highly efficient, operating range, while the transmission outputs a full range of speed
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`and torque. Ex. V, at 9. This newer powertrain technology allowed operators to select,
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`independently of engine speeds, different desired milling rotor speeds to maximize milling
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`production, maximize quality of the milled surface, or to maximize energy efficiency of milling
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`operations. Ex. L, 3:18-30, 3:54-59; Ex. R, 1:45-62.
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`26.
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`Variable transmissions would have been an apt term describing these stepless
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`transmissions. As distinct from a multispeed transmission which has a discrete number of fixed
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`speed ratios, variable transmissions such as CVTs were generally considered to be transmissions
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`having speed ratios that could be varied steplessly over their allowable ranges. Ex. T, at 1. Its speed
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`9
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`ratio may take on any value between its operational limits, i.e., an infinite number of ratios are
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`possible. Ex. T, at 1. An IVT was generally considered to be similar, but with the added restriction
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`that a speed ratio of zero must be available, i.e., it must be possible to have zero output velocity
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`for any input speed producing an infinite ratio range. Ex. T, at 1–2.
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`27.
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`Several types of stepless or variable transmissions were known. For example, U.S. Patent
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`No. 8,806,864 (“Ishii”) describes conventional forklifts with hydrostatic stepless transmissions
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`(HST) with variable speed outputs. Some of Ishii’s HSTs include “a hydraulic pump is directly
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`attached to the engine, a hydraulic motor is directly attached to a transaxle incorporating a
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`differential mechanism, and the hydraulic pump and motor are fluidly connected to each other via
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`hydraulic fluid pipes so as to constitute the HST.” Ex. W, 1:13-2:43. U.S. Patent Pub. No.
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`2009/0118912 (“Hugenroth”) describes a work machine with a continuously variable transmission
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`that uses a steplessly variable, mechanical-mechanical power-split transmission. Ex. S, ¶11. U.S.
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`Patent No. 9,864,347 (“Laux”) describes a work machine with a hydromechanical power-split
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`transmission with a planetary gear unit to combine two power inputs (hydrostatic and mechanical)
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`to drive a single transmission output. Ex. R, 5:61-6:24.
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`Ex. R, Fig. 4 (annotated)
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`28.
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`In addition to steplessly changing transmission gear ratios, a POSITA would have
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`understood that these transmissions change transmission gear ratios without any interruption or
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`discontinuity in the flow of power from the engine, i.e, seamlessly. This is in contrast with a
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`multispeed transmission where breaking driveline torque (and therefore power) is required when
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`changing from one gear ratio to the next i.e., not seamlessly. Ex. X; Ex. Y, at 18.
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`29.
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`POSITAs also knew of work machines with controllers that could store engine fuel
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`efficiency data in the form of fuel consumption maps, data tables and/or mathematical functions
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`and could analyze this data to determine optimal engine settings based on candidate engine speeds
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`and associated engine torques. Ex. Z, 8:53-64, 12:26-54. By analyzing the stored data these
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`controllers could coordinate the operation of the engine and transmission adjust the engine to the
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`optimum speed to minimize fuel consumption for a measured load and adjust the transmission’s
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`gear ratio based on actual engine speed to control the transmission output shaft to a desired speed.
`11
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`This is shown in Fig. 11 where the dotted lines show torque/speed pairs that all have the same or
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`constant fuel consumption with the best (lowest) fuel consumption (brake specific fuel
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`consumption) occurring in the smallest circle labeled 300, the engine’s optimal efficiency point.
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`This is known as the engine’s “sweet spot.”
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`Ex. Z, Fig. 11
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`VI. The ’538 Patent
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`A. Specification
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`30.
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`The ’538 Patent, entitled “Milling Machine Fuel Efficiency Control System,” describes “a
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`control system for controlling a machine having a rotor coupled to an engine through a variable
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`transmission.” Ex. B, 1:52-55, 1:61-63. The ’538 patent recognized a need in conventional milling
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`machines for “controlling and maintaining a desired rotor speed of a milling machine, which also
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`takes fuel consumption or efficiency into consideration.” Ex. B, 1:41-44. Machine operators
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`preferably maintained a substantially constant rotor speed at the speed specified by the operator
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`for at least the duration of a given milling task and/or until the operator chose otherwise. Ex. B,
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`1:28-32. Because changes in engine speed and engine load throughout the operation can cause
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`unwanted variations in the rotor speed, some milling machines, such as examples described in U.S.
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`Patent No. 8,465,105 (“Parker”), “provide variable transmissions which allow for variations in the
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`engine speed without affecting rotor speed.” Ex. B, 1:32-37.
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`31.
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`In various examples, the ’538 Patent provides a milling machine 100 with an engine 122,
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`variable transmission (CVT) 124, and rotor (milling drum) 118. Ex. B, 2:63-67.
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`Ex. B, Fig. 1 (annotated).
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`32.
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`The milling machine includes a controller 130 electrically connected to at least one of the
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`engine 122, variable transmission (CVT) 124, and rotor (milling drum) 118. Ex. B, 3:8-15, Fig.2.
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`The controller is configured to operate the engine and variable transmission by adjusting the
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`transmission gear ratio to maintain an operator’s desired rotor speed and adjusting the engine speed
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`based on engine load and fuel efficiency. Ex. B, 4:4-59. The controller 130 can communicate with
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`a memory 132 that retrievably stores one or more algorithms which configure the controller 130
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`to operate the engine 122 and transmission 124. Ex. B, 1:61-2:5, 3:8-29.
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`Ex. B, Fig. 2
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`33.
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`According to the specification, by providing “a milling machine with a cutter or rotor that
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`is driven via a variable transmission with continuously adjustable gear ratios, the present disclosure
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`is able to dynamically control the rotor and more reliably maintain desired rotor speeds specified
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`by the operator.” Ex. B, 4:54-59. “Furthermore, by constraining adjustments to the gear ratios
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`based on predetermined fuel consumption rates and predefined efficiency points, the present
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`disclosure is also able to dynamically control the engine to operate with better fuel economy.” Ex.
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`B, 4:59-63; see also 4:4-8.
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`Ex. B, Fig. 4
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`34. Memory 132 can store information relating to the estimated fuel consumption rates the
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`milling machine and engine achieve at different engine speeds and loads. The loads can include
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`loads due to the rotor 118. Ex. B, 4:9-14. The memory 132 can also store information regarding
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`efficiency points 162, which relate to the relative fuel consumption rates and combinations of
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`expected engine loads and expected engine speeds that should provide relatively better fuel
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`economy. Ex. B, 4:14-23. Using the efficiency points 162 as a reference, the controller 130 controls
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`the engine 122 to a speed at which the engine can achieve the determined engine load and that is
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`the most fuel efficient. Ex. B, 4:23-27. The controller 130 also receives from operator interface
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`126 desired rotor speed inputs from the operator and communicates with the CVT 124 to adjust
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`the CVT’s gear ratio based on changes in the engine speed for more consistent rotor speeds. Ex.
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`B, 3:8-29, 4:31-44, Fig. 2. Fig. 5 schematically depicts an exemplary algorithm according to this
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`method. Ex. B, 4:64-6:9.
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`Ex. B, Fig. 5
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`VII. CLAIM INTERPRETATION (’538 PATENT)
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`A. “a variable transmission”
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`Term
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`Caterpillar’s Construction
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`“a variable transmission”
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`Ex. B, claims 1, 6
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`“a transmission that can
`change transmission ratios”
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`Wirtgen America’s
`Construction
`“a stepless transmission that
`can change transmission ratios
`seamlessly”
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`35.
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`In my opinion, the term “a variable transmission” should be construed according to its plain
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`an ordinary meaning to mean “a stepless transmission that can change transmission ratios
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`seamlessly.”
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`36.
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`According to the ’538 patent, variable transmissions are those “which allow for variations
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`in the engine speed without affecting rotor speed.” Ex. B, 1:24-37. The background of the patent
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`references Parker as providing examples of variable transmissions. Parker provides two examples
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`of different variable transmissions—continuously variable transmissions and infinitely variable
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`transmissions—which a POSITA would have understood allow for variations in the engine speed
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`without affecting rotor speed. Parker considers infinitely variable transmissions and continuously
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`variable transmissions as distinct types of transmissions. Whereas Parker describes infinitely
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`variable transmissions as preferred, it describes continuously variable transmissions as an “other
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`type of transmission that provides a large range of gearing ratios.” Ex. L, 9:21-24. Thus, infinitely
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`variable transmissions and continuously variable transmissions are two distinct types of
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`transmission Parker identifies as variable transmissions in the context of the ’538 patent.
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`37.
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`Although Parker identifies other transmissions that can change transmission ratios, these
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`other transmissions do not allow for variations in engine speed without affecting rotor speed and
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`would not have been considered variable transmission in the context of the ’538 patent and Parker.
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`Parker rejects multi-speed select transmissions which provided “a very narrow speed range” and
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`did not “contain sufficient gearing ratios to accommodate all conditions.” Ex. L, 2:50-65. Parker
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`acknowledged that multi-speed select transmissions could change transmission ratio but found
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`them “unsatisfactory.” Ex. L, 2:55-56. A POSITA reading Parker would have understood that
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`multi-speed select transmissions are an example of a transmission that does not provide the “large
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`range of gearing ratios such as continuously variable transmissions” or the “sufficiently large
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`number of input/output ratios” that Parker requires. Ex. L, 4:65-5:7, 9:21-24. A POSITA would
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`similarly understand that a two-speed transmission, having the barest minimum (only one) ratio
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`change would neither meet Parker’s requirements nor fall within the scope of a variable
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`transmission in the context of the ’538 patent.
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`38.
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`Beyond infinitely variable transmissions and continuously variable transmissions, Parker
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`also discloses other suitable transmissions such as “multi-speed automatic or power shift
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`transmissions.” Ex. L, 4:67-5:4. However, in contrast to continuously variable transmissions and
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`infinitely variable transmissions, which are expressly named variable transmissions, Parker does
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`not refer to or describe these transmissions as variable transmissions. In my opinion, POSITAs
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`would have understood that these transmissions are different from variable transmissions. Unlike
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`variable transmissions, the multi-speed and other transmissions Parker identifies have discrete
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`numbers of gear ratios so that a change in transmission ratio causes a jump (or step) in transmission
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`output speed compared to the input speed. Because of their step changes, these other transmissions
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`cannot avoid jumps in their output speeds when changing gear to compensate for variations in
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`engine speed. The speed of a rotor connected to these other transmissions will be affected by
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`variations in engine speed. They are not the variable transmissions described in the ’538 patent’s
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`written description and recited in its claims which allow for variations in the engine speed without
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`affecting rotor speed.
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`39.
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`The ’538 patent’s written des