Case 1:17-cv-00770-JDW-MPT Document 118-8 Filed 11/17/22 Page 1 of 29 PageID #:
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`EXHIBIT H
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`

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`Case 1:17-cv-00770-JDW-MPT Document 118-8 Filed 11/17/22 Page 2 of 29 PageID #:
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`Trials@uspto.gov Paper 29
`571-272-7822
` Date: December 23, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WIRTGEN AMERICA, INC and JOSEPH VÖGELE AG,
`Petitioner,
`
`v.
`
`
`
`CATERPILLAR PAVING PRODUCTS INC.,
`Patent Owner.
`____________
`
`IPR2018-01202
`Patent 7,140,693 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`

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`
`I.
`
`INTRODUCTION
`
`Wirtgen America, Inc. and Joseph Vögele AG (“Petitioner”), on June
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`7, 2018, filed a Petition requesting inter partes review of claims 1–3, 5, 6,
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`15–19, 24–28, 36, and 38 of U.S. Patent No. 7,140,693 B2 (“the ’693
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`patent”).1 Paper 3 (“Pet.”). We issued a Decision to Institute an inter partes
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`review (Paper 10, “Dec.”) of all challenged claims (1–3, 5, 6, 15–19, 24–28,
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`36, and 38) under all grounds, namely Grounds 1–3 discussed below.
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`After institution of trial, Caterpillar Paving Products Inc. (“Patent
`
`Owner”) filed a Patent Owner Response (Paper 16, “PO Resp.”). Thereafter,
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`Petitioner filed a Petitioner’s Reply to Patent Owner’s Response (Paper 20,
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`“Pet. Reply”). Patent Owner then filed a Patent Owner’s Sur-reply (Paper
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`21, “PO Sur-reply”).
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`Oral argument was conducted September 16, 2019, for this
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`proceeding and the transcript of the hearing has been entered as Paper 28
`
`(Tr.”).
`
`
`
`We have jurisdiction under 35 U.S.C. § 6. After considering the
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`evidence and arguments of both parties, and for the reasons set forth below,
`
`we determine that Petitioner has not met its burden of showing by a
`
`preponderance of the evidence that claims 1–3, 5, 6, 15–19, 24–28, 36, and
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`38 are unpatentable.
`
`
`1 On page 1 of the Petition, Petitioner identifies claims 1, 15–19, 24–28, 36,
`and 38 as the challenged claims; however, in the Table of Grounds and the
`explanation of the challenge, Petitioner asserts that claims 1–3, 5, 6, 15–19,
`24–28, 36, and 38 are unpatentable. Accordingly, we understand the
`Petition to challenge claims 1–3, 5, 6, 15–19, 24–28, 36, and 38. Compare
`Pet. 1, with id. at 3–4, 25–90.
`
`2
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`

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`
`A.
`
`Related Proceedings
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`II.
`
`BACKGROUND
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`The ’693 patent is the subject of “ITC Investigation No. 337-TA-1088
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`[“ITC 337-TA-1088”] entitled ‘Road Construction Machines and
`
`Components Thereof’ filed on October 26, 2017.” Pet. 91.
`
`
`
`Petitioner concurrently filed another petition requesting inter partes
`
`review challenging claims 1–3, 5, 6, 15–19, 24–28, 36, and 38 of the ’693
`
`patent. IPR2018-01201, Paper 2.
`
`B.
`
`The ’693 Patent
`
`The ’693 patent is directed “to work machines for the treatment of
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`roadway surfaces, and more particularly to a planer or milling machine for
`
`asphalt and concrete.” Ex. 1001, 1:6–8. The ’693 patent describes a work
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`machine wherein automated movement to position a wheel or track
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`assembly between a projecting and a retracting position relative to a frame
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`occurs with greater stability in comparison to known machines. Id. at 2:25–
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`28. According to the ’693 patent, this work machine “is less prone to wear,
`
`requires less maintenance, and is easier to manufacture than known
`
`machines.” Id. at 2:29–30. This work machine also facilitates change of
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`rotational direction of the wheel or track about a vertical axis. Id. at 2:31–
`
`32.
`
`The work machine includes frame 2, a pair of front wheels 4, a pair of
`
`rear wheels 5, tool 6, and a drive mechanism.2 Ex. 1001, 3:10–12, 3:17–19.
`
`
`2 We note that the ’693 patent states, “the term ‘wheel’ is used throughout
`the specification to indicate either a wheel or a track assembly.” Id. at
`3:30–32. Thus, we understand any reference to a wheel or wheels to
`encompass a track or tracks.
`
`3
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`

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`The work machine includes articulation apparatus 10 as shown in Figure 2
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`reproduced below:
`
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`Figure 2 “is a schematic top plan view—partially in section—of a detail of a
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`cold planer . . . showing an articulation apparatus of a preferred embodiment
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`of the present invention with a rear wheel arranged in a projecting position
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`relative to the frame.” Id. at 2:60–64. Articulation apparatus 10 includes
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`support arm 11 connected to lifting column 32. Id. at 3:58–59. Apparatus
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`10 also includes first actuator 20 that pivots the support arm relative to frame
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`2 and second actuator 21 for rotating wheel 5 about vertical axis Z. Id. at
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`3:61–64.
`
`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–3, 5, 6, 15–19, 24–28, 36, and 38 of the
`
`’693 patent. Claims 1, 17, 36, and 38 are independent. Representative claim
`
`1 is reproduced below:
`
`4
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`

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`1. A work machine comprising:
`a frame supported by a pair of front wheels or tracks and
`a pair of rear wheels or tracks, at least one of the wheels or
`tracks being associated with a respective lifting column
`adapted to raise and lower said frame relative to the respective
`wheel or track;
`a work tool supported by said frame;
`a drive mechanism adapted to rotate said work tool and at
`least one of said wheels or tracks; an articulation apparatus
`adapted to pivotally move said one of said wheels or tracks
`associated with said lifting column between a projecting
`position and a retracted position relative to said frame, said
`articulation apparatus including:
`a support arm pivotally connecting said frame to
`the lifting column associated with said one wheel or
`track;
`a first actuator connected to said support arm and
`operable to pivot said support arm relative to said frame;
`a second actuator adapted to rotate said at least one wheel
`or track about a vertical axis.
`
`
`Ex. 1001, 9:25–43.
`
`D.
`
`References Relied Upon
`
`Petitioner relies on the following references as the basis for the
`
`grounds of rejection or as evidence in support of a position advanced by
`
`Petitioner:
`
`Name
`
`Reference
`
`Gutman
`
`US 3,843,274, issued Oct. 22, 1974
`
`Bitelli
`
`EP 1001088 A2, published May, 17, 2000
`
`Skotnikov
`
`US 6,311,795 B1, issued Nov. 6, 2001
`
`Busley
`
`WO 97/42377, published Nov. 13, 1997
`
`Ex. No.
`
` 1005
`
` 1006
`
` 1007
`
` 1017
`
`Pet. 3–20.
`
`5
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`

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`E.
`
`The Asserted Grounds of Unpatentability
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`Petitioner asserts the challenged claims are unpatentable on the
`
`following grounds:
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`1–3, 15–19, 24–28, 36, 38
`
`103(a)
`
`17–19, 24–28, 38
`
`103(a)
`
`Gutman, Bitelli
`
`Gutman, Bitelli,
`Skotnikov
`
`5, 6
`
`103(a)
`
`Gutman, Bitelli, Busley
`
`Pet. 18–19. Petitioner supports its challenge with the Declarations of John
`
`W. Arnold, dated June 7, 2018 (Ex. 1003) and June 14, 2019 (Ex. 1040).
`
`Patent Owner supports its response to this challenge with the Declaration of
`
`William Singhose, Ph.D., dated April 1, 2019 (Ex. 2008).
`
`III. ANALYSIS
`
`A petition must show how the construed claims are unpatentable
`
`under the statutory ground it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner
`
`bears the burden of proving unpatentability of the challenged claims, and the
`
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`
`prevail, Petitioner must establish the facts supporting its challenge by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that “[a] POSITA, would have had either: [1)] a
`
`bachelor’s degree in mechanical engineering or an equivalent degree and
`
`two to five years of experience working on mobile construction machine
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`design, or 2) seven to ten years of experience working on mobile
`
`construction machine design. Pet. 5 (citing Ex. 1003 ¶¶ 21–22). Patent
`
`6
`
`

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`Owner proposes a level of ordinary skill that “is not materially different than
`
`that set forth by” Petitioner. PO Resp. 7. We agree with Petitioner’s
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`definition of the level of ordinary skill in the art as it is consistent with the
`
`level of ordinary skill reflected in the ’693 patent and prior art of record.
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`Further, our analysis below would not change under either party’s proposed
`
`level of ordinary skill.
`
`B.
`
`Claim Construction
`
`The claim construction standard to be employed in an inter partes
`
`review changed in October 2018. See Changes to the Claim Construction
`
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`
`and Appeal Board, 83 Fed. Reg. 51,340 (October 11, 2018) (amending 37
`
`C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
`
`§ 42.100(b) (2019)). At the time of the filing of the Petition in this
`
`proceeding, however, the applicable claim construction standard was set
`
`forth in 37 C.F.R. § 42.100(b), which provides that “[a] claim in an
`
`unexpired patent . . . shall be given its broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§ 42.100(b) (2017); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2142 (2016) (upholding the use of the broadest reasonable
`
`interpretation standard). Accordingly, in this inter partes review, claim
`
`terms are given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Also, we are careful not to read a
`
`7
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`particular embodiment appearing in the written description into the claim if
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`the claim language is broader than the embodiment. See In re Van Geuns,
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`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`
`the claims from the specification.”).
`
`Petitioner asserts that “[i]n setting forth its invalidity grounds,
`
`[Petitioner] has applied the BRI of each claim term.” Pet. 23. Petitioner
`
`then discusses its construction of “an articulation apparatus adapted to
`
`pivotally move” in the related ITC proceeding and Patent Owner’s
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`contrasting construction of this recitation. Id. Next, Petitioner asserts this
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`“Petition relies on prior art disclosing swing legs that use a single support
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`arm (thus satisfying either party’s construction) in establishing
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`obviousness.” Id. at 24. Petitioner concludes the claim construction part of
`
`the Petition by asserting that the recitation “controllably actuating” should
`
`be construed. Id. at 24–25. As express construction of the recitations “an
`
`articulation apparatus adapted to pivotally move” and “controllably
`
`actuating” are not necessary to our decision, we do not construe them. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017).
`
`Patent Owner contends that the recitation “a retracted position relative
`
`to said frame” should be construed. PO Resp. 5. Construction of this
`
`limitation is central to our decision for the reasons discussed below.
`
`Accordingly, we construe it.
`
`1. Patent Owner’s Contentions
`
`Patent Owner contends that “[t]he plain language of the claims, the
`
`specification, the prosecution history, and additional evidence shows that [“a
`
`retracted position relative to said frame”] means that the retracted position
`
`8
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`

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`requires the wheel to be ‘within the outline of the frame.’” PO Resp. 8. In
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`support of this contention, Patent Owner asserts that “the plain language of
`
`the claims set up a dichotomy between two types of positions: those that are
`
`projecting and those that are retracted relative to the frame.” Id. “Thus,
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`[according to Patent Owner], the claims make clear that positions that are
`
`outside or projecting from the frame are different than those inside or
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`retracted within the frame.” Id. at 9.
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`Considering the use of this language in the Specification, Patent
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`Owner contends that “the patent explains that ‘a rear support wheel [] can be
`
`pivoted between an interior or retracted position and an exterior or
`
`projecting position.’” PO Resp. 9 (quoting Ex. 1001, 1:57–60) (brackets in
`
`original). Patent Owner asserts that “[t]he patent specifically equates the
`
`‘retracted’ position with an interior position and a ‘projecting’ position with
`
`an exterior position.” Id. Patent Owner asserts further that “[i]n the same
`
`background section, the patent explains that the retracted or ‘interior’
`
`position is one in which the wheel is ‘in a retracted position relative to the
`
`general outline of the frame.’” Id. (quoting Ex. 1001, 1:19–23). “Thus,
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`[according to Patent Owner], the patent makes clear that the retracted
`
`position is one in which the wheel is inside the frame.” Id. (citing Ex. 2008
`
`¶¶ 42–45). In addition, Patent Owner asserts that “[a]dditional portions of
`
`the patent only further reinforce that the ‘retracted’ position is within the
`
`outline of the frame.” Id.
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`Turning to the prosecution history, Patent Owner explains that
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`“[d]uring prosecution, the examiner issued a rejection against the pending
`
`claims based on U.S. Patent 6,443,687 (‘Kaiser’)” and that in response
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`Patent Owner argued that “the wheels of Kaiser ‘never retracted relative to
`
`9
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`the chassis, as claimed by applicant.’” PO Resp. 13 (citing Ex. 1002, 82–83,
`
`100). According to Patent Owner, in response to this argument “the
`
`Examiner withdrew the rejections based on Kaiser and presented new
`
`rejections to the claims,” which supports Patent Owner’s contention that “the
`
`retracted position must be within the outline of the frame.” Id. (citing Ex.
`
`1002, 181–83).
`
`Patent Owner also provides extrinsic evidence of how this claim
`
`language is used in the industry and discusses how this language was
`
`construed at the ITC. PO Resp. 13–16, 18–19.
`
`2. Petitioner’s Arguments
`
`Petitioner responds that “[t]he specification repeatedly us[es] the
`
`broad modifier ‘relative to’ the frame for the retracted position but never
`
`equates this modifier to ‘within’ or ‘inside’ the frame.” Pet. Reply 3 (citing
`
`Ex. 1001, 1:22–23, 2:33–34). According to Petitioner, the Specification
`
`“only describes the wheel as ‘retracted inside the frame’ one time when
`
`describing a preferred embodiment.” Id. (citing Ex. 1001, 5:32; PO Resp.
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`10; Ex. 1025, 46:1–18). Petitioner also asserts that Patent Owner’s
`
`“construction seeks to ‘import a limitation from the preferred embodiments
`
`to restrict the meaning of a claim term.’” Id. (quoting Arlington Indus., Inc.
`
`v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir. 2003); citing
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`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016)).
`
`Petitioner asserts further that “[a]lthough it describes a prior-art
`
`machine as having ‘interior’ and ‘exterior’ positions, the specification never
`
`mentions the frame when using these terms or suggests that they refer to
`
`positions within and outside the frame.” Pet. Reply 3 (citing PO Resp. 16,
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`9–11). According to Petitioner, “the claims do not use ‘exterior’ and
`
`10
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`

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`‘interior’ or ‘outside’ and ‘inside,’ instead reciting that the positions be
`
`‘projecting’ and ‘retracted’ relative to the frame.” Id. at 3–4 (citing DSW,
`
`Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1348 (Fed. Cir. 2008).
`
`Responding to Patent Owner’s allegation “that the specification’s
`
`mention of ‘the fully projecting position 60 and the retracted position 70’
`
`acknowledges multiple projecting positions and only one retracted position,”
`
`Petitioner contends that “the specification also includes the phrase ‘until the
`
`rear wheel 5 is placed in the final retracted or projecting position 70 and
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`60.’” Pet. Reply 4 (citing PO Resp. 10; Ex. 1001, 7:22–23, 7:44–47). Thus,
`
`according to Petitioner, under Patent Owner’s “logic, there must be multiple
`
`retracted positions because, just as a component can be less-than-fully
`
`projecting, it can be less-than-fully retracted.” Id. (citing Ex. 1025, 36:23–
`
`37:11, 109:17–110:1). In addition, Petitioner asserts that “[t]he
`
`specification’s use of ‘relative to’ further supports [Petitioner’s]
`
`construction” because “relative to” provides reference points and does not
`
`specify locations or orientations of moving parts. Pet. Reply 4–5.
`
`Considering the prosecution history, Petitioner contends that “the
`
`Patent Office never agreed with the applicant’s interpretation of Kaiser.”
`
`Pet. Reply 5. Petitioner asserts that “[t]he applicant presented at least three
`
`other arguments relating to Kaiser” “[a]nd the Examiner did not give any
`
`reason for withdrawing the Kaiser rejection.” Id. (citing Ex. 1002, 99–100,
`
`181–183). Petitioner asserts further that “the applicant’s argument regarding
`
`Kaiser is distinct from Caterpillar’s argument here: ‘Kaiser discloses moving
`
`the wheels to a position where they are roughly parallel with the side of the
`
`chassis and always far in front of or behind the chassis, but never retracted
`
`relative to the chassis.’” Id. (citing Ex. 1002, 100). In addition, Petitioner
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`11
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`asserts that “[w]hen the Examiner issued a rejection over Gutman (Ex.
`
`1010), the applicant never suggested that Gutman failed to disclose a
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`retracted position.” Id. at 6 (comparing Ex. 1002, 83, with id. at 101–02; Ex.
`
`1040 ¶ 24).
`
`Turning to the extrinsic evidence proffered by Patent Owner,
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`Petitioner contends that “[d]ictionary definitions support [Petitioner’s]
`
`construction.” Pet. Reply 7. According to Petitioner, “[a] POSITA would
`
`have understood that drawing the track back toward the frame meets these
`
`definitions.” Id. (citing Ex. 1040 ¶¶ 26–28).
`
`3. Patent Owner’s Response
`
`Responding to Petitioner’s arguments, Patent Owner reiterates its
`
`position that “the claims set forth a dichotomy between positions that project
`
`from the frame (a projecting position) and those that are retracted within the
`
`frame (a retracted position).” PO Sur-reply 2. Patent Owner contends that
`
`“[Petitioner] ignores this relationship, proposing an explanation that gives no
`
`meaning to the ‘projecting’ position.” Id. According to Patent Owner,
`
`Petitioner’s construction renders the limitation unclear because Petitioner’s
`
`“construction makes it impossible to determine whether the track . . . is in
`
`the retracted or projecting position.” Id. at 3. Patent Owner explains that
`
`because Petitioner “defines the ‘retracted’ position only based on the track’s
`
`previous position (i.e., whether it was previously further from the frame),
`
`one cannot determine whether [a particular] track meets the claim
`
`limitation.” Id. Patent Owner asserts that Petitioner’s construction adds
`
`further uncertainty because Petitioner’s “construction permits a position to
`
`be both projecting and retracted.” Id. Given this uncertainty, Patent Owner
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`12
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`submits that Petitioner’s construction “eliminates the distinction between the
`
`two positions and renders them meaningless.” Id. at 5.
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`Patent Owner also reiterates its contention that the specification
`
`supports its construction. PO Sur-reply 6–8. In particular, Patent Owner
`
`notes that Petitioner “argues that the specification never equates the term
`
`‘relative to’ with ‘within’ or ‘inside’ the frame,” “[b]ut [Patent Owner] never
`
`suggested that the patent equates these terms.” Id. at 6. “Instead, [according
`
`to Patent Owner], the patent clearly equates ‘exterior’ with ‘projecting’ and
`
`‘interior’ with ‘retracted,’ stating that ‘a rear support wheel [] can be pivoted
`
`between an interior or retracted position and an exterior or projecting
`
`position.’” Id. at 6–7 (citing Ex. 1001, 1:57–60; PO Resp. 9) (empty
`
`brackets in original).
`
`Addressing Petitioner’s arguments regarding the prosecution history,
`
`Patent Owner explains that in distinguishing Kaiser the applicant specifically
`
`argued that Kaiser fails to disclose “retracting a wheel or track to a position
`
`within the chassis.” PO Sur-reply 8 (emphasis added) (citing Ex. 1002,
`
`100). Thus, according to Patent Owner, applicant “explained what was
`
`required to have a retracted position—that the wheel move ‘within the
`
`chassis.’” Id. at 9 (quoting Ex. 1002, 100 (emphasis added by Patent
`
`Owner)).
`
`4. Analysis
`
`Considering the express claim language “a retracted position relative
`
`to said frame,” we agree with Patent Owner that in order for this recitation to
`
`have meaning, the position must be determined relative to the frame, as
`
`opposed to relative to the position of the wheel or track. See PO Sur-reply
`
`3–5. We also agree with Patent Owner that Petitioner’s proposed
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`13
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`construction “eliminates the distinction between the two positions and
`
`renders them meaningless.” Id. at 5; see also id. at 3–5 (explaining why
`
`Patent Owner’s construction “permits a position to be both projecting and
`
`retracted”). For these reasons, we determine that the express claim language
`
`supports Patent Owner’s claim construction.
`
`Turning to the Specification, we also agree with Patent Owner that the
`
`Specification supports its claim construction. PO Resp. 9–12. Specifically,
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`the Specification equates “retracted” with “interior” and “projecting” with
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`“exterior.” Ex. 1001, 1:59–60. Although the equivalence of these terms is
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`discussed in the context of the background of the invention, the use of the
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`terms “retracted” and “projecting” in the rest of the Specification is
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`consistent with this understanding. For example, column 5 of the
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`Specification describes a wheel positioned “to project from the frame 2, as
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`indicated by reference numeral 60 in FIG. 2, or to be retracted inside the
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`frame 2, as indicated by reference numeral 70 in FIG. 3, and vice versa.”
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`Ex. 1001, 5:30–33 (emphasis added). Accordingly, we determine that the
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`Specification also supports Patent Owner’s claim construction.
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`Further, we agree with Patent Owner that the prosecution history
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`supports its claim construction. PO Resp. 12–13; PO Sur-reply 8–10. As
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`noted by Patent Owner, in distinguishing Kaiser during prosecution, the
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`argument was made that the “feature of retracting a wheel or track to a
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`position within the chassis” was missing from Kaiser. PO Sur-reply 8
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`(citing Ex. 1002, 100). Although, Petitioner is correct that the Examiner did
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`not give any reason for withdrawing the rejection based on Kaiser, this
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`argument misses the point. Pet. Reply 5. As noted by Patent Owner, the
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`relevant inquiry is whether during prosecution the applicant limited the
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`meaning of the language at issue. See PO Sur-reply 9–10 (citing Saffran v.
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`Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (stating that “an
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`applicant’s argument that a prior art reference is distinguishable on a
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`particular ground can serve as a disclaimer of claim scope even if the
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`applicant distinguishes the reference on other grounds as well”). In this
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`case, we agree with Patent Owner that “simply because the applicant made
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`other arguments against Kaiser does not diminish the fact that the patentee
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`clearly set forth its understanding of the retracted limitation.” Id. at 10. For
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`these reasons, we determine that the prosecution history supports Patent
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`Owner’s claim construction.
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`5. Conclusion regarding Claim Construction
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`Having determined that the express claim language, Specification, and
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`prosecution history all support Patent Owner’s claim construction in
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`accordance with our claim construction standards, and considering the full
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`record established during trial, we determine that the recitation “retracted
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`position relative to the frame” requires that the wheel or track be retracted
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`within the frame.3
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`C. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
`
`
`3 In support of their respective positions both Patent Owner and Petitioner
`refer to the claim construction determinations in ITC 337-TA-1088. See,
`e.g., Pet. 23; PO Resp. 18–19. In its Commission Opinion, the ITC
`determined that “the term ‘a retracted position relative to the frame’ [means]
`‘a position within or inside the frame.” Ex. 3001, 27. This claim
`construction is essentially the same as our claim construction.
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and, when presented, (4) objective
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`evidence of nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–
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`18 (1966).
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`We analyze the asserted grounds of unpatentability in accordance with
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`the above-stated principles.
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`D. Obviousness of Claims 1–3, 15–19, 24–28, 36, and 38 in View
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`of the Combined Teachings of Gutman and Bitelli
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`Petitioner contends that claims 1–3, 15–19, 24–28, 36, and 38 are
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`unpatentable under 35 U.S.C. § 103(a) over the combined teachings of
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`Gutman and Bitelli. Pet. 25–67. Having considered the evidence in the
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`complete record established during trial, we are persuaded that Petitioner has
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`not demonstrated by a preponderance of the evidence that these claims
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`would have been obvious in view of Gutman and Bitelli. We begin our
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`analysis with a brief overview of Gutman and Bitelli. Next, we address the
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`parties’ contentions and then we discuss our reasoning.
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`1.
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`Gutman
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`Gutman is directed to reclaiming vehicle 10 shown in Figure 1,
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`reproduced below:
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`4 Patent Owner provides no such objective evidence for our consideration.
`See generally PO Resp.
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`Figure 1 is a side elevational view of reclaiming vehicle 10. Gutman, 1:62–
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`63. Reclaiming vehicle 10 includes frame assembly 12 supported by
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`forward pair of tracks 14, 16 and rearward pair of tracks 18, 20 with a means
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`for driving the pairs of tracks. Id. at 2:7–9, 3:20–22. Reclaiming vehicle 10
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`also includes rotary cutter 30 having cutting blades 32 that cut the heated
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`upper layer of asphalt as the vehicle 10 is driven forward. Id. at 2:24–31.
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`Frame assembly 12 also includes arms 60, 62, 64, 66, each pivotally fixed
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`thereto at one end and fixed to a respective track at the other end. Id. at
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`3:23–27. As shown in Figure 3, reproduced below, cylinders 68, 70, 72, and
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`74 interconnect frame assembly 12 with arms 60, 62, 64, 66 so that
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`extension of any cylinder pivots the arm associated with that cylinder
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`outwardly from vehicle 10 and retraction of any cylinder pivots the arm
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`associated with that cylinder inwardly towards vehicle 10:
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`17
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`Id. at 3:29–34. Figure 3 is a top plan view of reclaiming vehicle 10. Id. at
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`
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`1:66.
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`2.
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`Bitelli
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`Bitelli is directed to scarifying machine 1 shown in Figure 1,
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`reproduced below:
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`18
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`

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`Figure 1 is an isometric view of scarifying machine 1. Bitelli ¶ 17.
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`Scarifying machine 1 includes frame 2 supported by a pair of front wheels 4
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`and a pair of back wheels 5. Id. ¶ 18. Scarifying machine 1 also includes
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`motorization means 9 for rotating a milling drum 6. Id. ¶ 20. Motorization
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`means can also be configured to drive wheels 4, 5. Id.
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`As shown in Figure 3, reproduced below, back wheels 5 are supported
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`by articulation unit 10:
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`19
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`Bitelli ¶ 21. Figure 3 is a top detail view of a back wheel of scarifying
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`machine 1. Id. ¶ 17. Articulation unit 10 includes first arm 11 and second
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`arm 12 secured via respective ends 11a, 12a though gudgeon 11b, 12b to
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`plate 13. Id. ¶ 22. Hydraulic jack 14 connects plate 13 to frame 2 to allow
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`lifting and lowering of scarifying machine 1 to adjust the milling depth of
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`drum 6. Id. ¶ 23. In addition, each articulation unit 10 cooperates with first
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`actuator means to allow wheel 5 to move from a position laterally projecting
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`from frame 2 to a position re-entering with respect to frame 2 and vice versa.
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`Id. ¶ 24.
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`3. Petitioner’s Challenge
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`Petitioner maps elements from Gutman or Bitelli to the limitations of
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`claims 1–3, 15–19, 24–28, 36, and 38. Pet. 25–67. Independent claim 1
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`requires “an articulation apparatus adapted to pivotally move said one of
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`said wheels or tracks associated with said lifting column between a
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`projecting position and a retracted position relative to said frame.” Ex.
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`1001, 9:33–38. Independent claim 17 similarly requires a step of
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`20
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`“controllably actuating a first actuator to pivot said support arm relative to
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`said frame to position said wheel or track between a projecting or retracted
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`position relative to said frame.” Id. at 10:50–53. Independent claim 36
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`recites essentially the same limitation as claim 1 and independent claim 38
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`recites essentially the same limitation as claim 17. Id. at 13:19–22, 14:24–
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`27. Each of these limitations require movement of a wheel or track between
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`a projecting position and a retraced position relative to the frame. Id. at
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`9:36–37, 10:52–53, 13:21–22, 14