Case 1:17-cv-00770-JDW-MPT Document 118-9 Filed 11/17/22 Page 1 of 75 PageID #:
`12045
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`EXHIBIT I
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`Case 1:17-cv-00770-JDW-MPT Document 118-9 Filed 11/17/22 Page 2 of 75 PageID #:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. _____
`Filed: April 1, 2019
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`WIRTGEN AMERICA, INC. and WIRTGEN GMBH
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`Petitioners
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`v.
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`CATERPILLAR PAVING PRODUCTS, INC.
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`Patent Owner
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`
`
`
`Case No. IPR2018-01202
`Patent No. 7,140,693
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`PATENT OWNER’S RESPONSE
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`Case 1:17-cv-00770-JDW-MPT Document 118-9 Filed 11/17/22 Page 3 of 75 PageID #:
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`I.
`II.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE ’693 PATENT ......................................................................................... 2
`A. Nature of the Invention in the ’693 Patent ............................................ 2
`B.
`Related Litigation for the ’693 Patent ................................................... 4
`III. PERSON OF ORDINARY SKILL IN THE ART .......................................... 7
`IV. CLAIM CONSTRUCTION ............................................................................ 7
`A.
`“A Retracted Position Relative to Said Frame” .................................... 8
`1.
`The claim language supports Caterpillar’s construction ............ 8
`2.
`The specification supports Caterpillar’s construction ................ 9
`3.
`The prosecution history supports Caterpillar’s
`construction ...............................................................................12
`Caterpillar’s construction is consistent with how the term
`is used by others in the field .....................................................13
`5. Wirtgen’s arguments are unpersuasive .....................................16
`6.
`Claim Construction at the ITC ..................................................18
`“Controllably Actuating” ....................................................................19
`B.
`C. Wirtgen’s Additional Claim Construction Discussion........................19
`V. GROUND 1: GUTMAN AND BITELLI DO NOT RENDER
`CLAIMS 1–3, 15–19, 24–28, 36, OR 38 OBVIOUS ....................................20
`A. Overview of Gutman ...........................................................................20
`B. Overview of Bitelli ..............................................................................22
`C.
`“A retracted position relative to said frame” (Independent
`Claims 1, 17, 36, 38) ...........................................................................23
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`4.
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`i
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`D.
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`E.
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`F.
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`G.
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`“The projecting and retracted position forming an arc of at least
`90º” (Independent Claim 17) ...............................................................28
`“A drive mechanism adapted to rotate said work tool and at
`least one of said wheels or tracks” (Independent Claims 1 and
`36) ........................................................................................................39
`“Said support arm includes an actuator adapted to lock said
`support arm in its projecting position and retracted position,
`respectively” (Claims 15, 16, 26, 27, and 36) .....................................43
`“Positioning said wheel or track in said rotational direction is
`controlled dependent on pivoting of said wheel or track relative
`to said frame” (Claims 24 and 25) ......................................................48
`“Positioning said wheel or track in said rotational direction
`about the vertical axis is coordinated with the steering of at
`least one of the other of the plurality of wheels or tracks”
`(Claim 28) ............................................................................................49
`VI. GROUND 2: GUTMAN, BITELLI, AND SKOTNIKOV DO NOT
`RENDER CLAIMS 17–19, 24–28, OR 38 OBVIOUS.................................50
`A.
`Skotnikov Is Not Analogous Art to the ’693 Patent (All
`Challenged Claims) .............................................................................51
`B. A POSITA Would Not Have Been Motivated to Combine
`Gutman, Bitelli, and Skotnikov (All Challenged Claims) ..................54
`Skotnikov Does Not Change Gutman and Bitelli’s Failure to
`Render Claim 17 Obvious (All Challenged Claims) ..........................57
`VII. GROUND 3: GUTMAN, BITELLI, AND BUSLEY DO NOT
`RENDER CLAIMS 5 OR 6 OBVIOUS ........................................................60
`A. A POSITA Would Not Have Been Motivated to Combine
`Busley with Gutman or Bitelli (All Challenged Claims) ....................60
`B. Wirtgen Has Not Shown That Claims 5 or 6 Would Have Been
`Obvious Over Gutman, Bitelli, and Busley ........................................64
`VIII. CONCLUSION ..............................................................................................66
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`H.
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`C.
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`ii
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`IX. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ........................................66
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`iii
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Amhil Enter. Ltd. v. Wawa, Inc.,
`81 F.3d 1554 (Fed. Cir. 1996) ............................................................................ 13
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 53
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 14
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 7
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) .......................................................................... 10
`In re Ethicon, Inc.,
`844 F.3d 1344 (Fed. Cir. 2017) .......................................................................... 51
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .................................................................... 38, 65
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .............................................................. 37, 58, 65
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`327 F.3d 1364 (Fed. Cir. 2003) .......................................................................... 17
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 43, 51
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 18
`Leseman, LLC v. Stratasys, Inc.,
`730 F. App’x 912 (Fed. Cir. 2018) ..................................................................... 39
`
`iv
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`

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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015), overruled on other grounds by
`Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) ............................... 13
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370 (Fed. Cir. 2017) .......................................................................... 66
`SAS Institute, Inc. v. ComplementSoft, LLC.,
`825 F.3d 1341 (Fed. Cir. 2016), rev’d in part on other grounds,
`138 S. Ct. 1348 (2018) ........................................................................................ 10
`State Contracting & Engineering Corp. v. Condotte America, Inc.,
`346 F.3d 1057 (Fed. Cir. 2003) .......................................................................... 51
`Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 64
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ............................................................................ 8
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 17
`Federal Statutes
`35 U.S.C. § 112, ¶ 6 ................................................................................................. 19
`Regulations
`37 C.F.R. § 42.100(b) (2016) ..................................................................................... 8
`Other Authorities
`New Shorter Oxford English Dictionary (3rd ed. 1993).................................... 15, 16
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`
`v
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`Patent Owner’s Response
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`INTRODUCTION
`Wirtgen’s Petition merely presents arguments that were already rejected by
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`I.
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`the ITC. The ITC refused to invalidate any claim of the ’693 patent based on
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`Wirtgen’s Gutman-based arguments. The ALJ found in Caterpillar’s favor for the
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`following reasons: 1) Gutman and the combination of Gutman and Bitelli failed to
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`render obvious the “drive mechanism” limitation found in claims 1 and 36; 2)
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`Gutman failed to render obvious the 90-degree arc limitation of claim 17; and 3)
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`Gutman and Bitelli failed to render obvious the “locking” limitations found in claims
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`15, 16, 26, 27, 36, and 38. Wirtgen did not appeal a single one of these rulings,
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`making them final at the ITC. For these same reasons found by the ITC, Wirtgen’s
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`arguments necessarily fail here as well.
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`Even aside from each of those previous findings, Wirtgen’s Gutman-based
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`grounds also fail because none of the proposed Grounds render obvious the
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`“retracted position relative to the frame” limitation that is present in every
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`independent claim. Wirtgen fails to consider the proper construction of this term,
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`which requires a wheel or track to move within the outline of the machine frame. As
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`properly construed, Wirtgen’s arguments fail for every Ground presented.
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`1
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`

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`II. THE ’693 PATENT
`A. Nature of the Invention in the ’693 Patent
`The ’693 patent is directed to a “milling machine with re-entering back
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`wheels.” A road-milling machine removes portions of a road surface by lowering a
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`rotating tool—called a milling drum—onto the pavement. Ex. 2008, ¶ 31. The
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`milling machine has four wheels or tracks, at least one of which attaches to a lifting
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`column. Ex. 1001 at 9:25–26. The lifting columns permit the machine to raise and
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`lower the frame. Ex. 2008, ¶ 31. The milling machine in the ’693 patent has a
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`moveable, or “swinging” leg, which is useful in small work operations. Ex. 1001 at
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`9:25–26.
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`The patent describes two operating positions for the swinging leg: a position
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`where the track is outside the frame and a position where the track is brought within
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`the frame. When the track is outside the frame, it is in a “projecting” position where
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`it “project[s] from the frame.” Id. at 6:35–36. The projecting position improves the
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`machine’s operational stability, which is significant for milling machines because
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`they are generally very top-heavy and prone to tipping over. Ex. 2008, ¶ 34.
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`Conversely, the ’693 patent describes the “retracted position” as the position where
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`“the rear wheel is mounted at the frame in a retracted position relative to the general
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`outline of the frame.” Ex. 1001 at 1:19–25. Elsewhere, the patent explains that, in
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`this position, the wheel is “retracted inside the frame.” Id. at 5:29–33. The retracted
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`2
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`

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`position enables the machine to mill flush with obstacles. If a milling machine cannot
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`mill flush with obstacles, then significant additional time and effort must be spent to
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`mill these areas with small machines or tools. Ex. 2008, ¶ 37.
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`To move the wheel or track between positions, the patent discloses an
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`“articulation apparatus” with a “support arm” extending between the frame of the
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`machine and the lifting column. Id. at 3:56–61. The articulation apparatus uses two
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`actuators to accurately and precisely position the swinging leg. See Ex. 1001 at 9:33–
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`37, 7:67–63. The first actuator pivots the leg between the projecting and retracted
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`positions with respect to the frame of the machine. See id. at 6:51–67. The second
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`actuator rotates the wheel or track about the vertical axis. See id. at 5:48–53. The
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`patent explains that this novel articulation apparatus “provides for enhanced
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`operational reliability” compared with the prior art, allowing for “a more stable
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`motion, less vibration and less wear[.]” Id. at 6:58–67.
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`The patent also describes a locking actuator as part of the support arm, which
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`“is used for blocking a rotary movement of the support arm” relative to the frame.
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`Id. at 5:54–59. This actuator allows the wheel or track to be locked in the projecting
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`or retracted positions, but still permits the second actuator to rotate the wheel while
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`locked. Id. at 5:63–6:2.
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`Finally, the patent describes specific configurations allowing the wheel or
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`track to be steered. Specifically, “moving and steering operations may be facilitated
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`3
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`

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`either independent or coordinated with each other” and steering is possible both
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`when the wheel is in the retracted position and when it is in the projecting position.
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`Id. at 7:51–57.
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`B. Related Litigation for the ’693 Patent
`Wirtgen asserted the same four prior-art references from this IPR against the
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`’693 patent in ITC Investigation No. 337-TA-1088, where Caterpillar accused
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`Wirtgen’s 1810 Series of road milling machines of infringement. Wirtgen’s
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`arguments were supported by the opinion of Mr. Arnold, the same expert used in
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`this IPR, and his declaration is substantially identical to the expert report and
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`testimony from the ITC. Compare Ex. 2001 (ITC Witness Statement of John
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`Arnold), with Ex. 1003 (Mr. Arnold’s declaration in this IPR). The Administrative
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`Law Judge in Inv. No. 337-TA-1088 issued an Initial Determination (ID) on
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`February 14, 2019, finding Wirtgen had violated Section 337. See Ex. 2005, ID. The
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`Initial Determination rejected Wirtgen’s obviousness arguments for all claims
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`challenged over the Gutman reference, which also included combinations with
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`Bitelli, Skotnikov, and Busley. See id. at 53–63. As discussed below, many of the
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`ALJ’s findings in that case are directly relevant to the issues in this proceeding.
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`Relevant to Ground 1, the ALJ found that Gutman—alone and in combination
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`with Bitelli—fails to render any of the Challenged Claims obvious. The ALJ found
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`that Gutman failed to disclose or render obvious the claimed “drive mechanism
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`4
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`

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`adapted to rotate said work tool and at least one of said wheels or tracks.” Id. at 53–
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`55. The ALJ found that this limitation “requires a single drive mechanism for
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`rotating the work tool and one of the tracks” and that “Wirtgen has not identified any
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`such mechanism disclosed in Gutman.” Id. at 55. The ALJ also found that, although
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`Bitelli discloses a drive mechanism, Wirtgen failed to show any reason why a
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`motivation to combine that drive mechanism with Gutman’s machine. Id. at 58–59.
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`This limitation appears in claims 1 and 36.
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`For claim 17 and its dependent claims, the ALJ also rejected Wirtgen’s
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`obviousness arguments. The ALJ found that Wirtgen had failed to show that
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`Gutman’s arms could pivot through an arc of at least 90 degrees, which is required
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`by the claim language. Id. at 56–57. The ID recognized the testimony of Caterpillar’s
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`expert, who testified that extending Gutman’s legs in such a way “would not improve
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`the machine because it would actually begin to reduce track width and decrease
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`stability.” Id.
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`For the claims requiring a “locking mechanism” (claims 15, 16, and 36, claims
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`26, 27, and 36 also include these features), the ALJ rejected Wirtgen’s obviousness
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`argument applying Gutman and Bitelli. The ALJ found that “Gutman does not
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`disclose a manual locking system,” which made the Bitelli locking system less
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`relevant. Id. at 59. The ID also relied on the testimony of Caterpillar’s expert that
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`“the configuration of the support arms in Gutman does not accommodate locking
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`5
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`

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`pins that engage with holes in the frame.” Id. Just as the ALJ found Wirtgen failed
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`to show any of these claims were obvious, so too should the Board.
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`Relevant to Ground 2, the ALJ rejected Wirtgen’s proposed combination of
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`Gutman, Bitelli, and Skotnikov. Id. at 61–63. The ALJ found that Skotnikov’s
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`disclosure “supports Caterpillar’s argument that the steering system disclosed
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`therein is directed to a different problem for a different type of machine” than
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`Gutman or Bitelli. Id. at 62. The ALJ found that Wirtgen failed to show any
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`disclosure
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`in any reference “identifying a need for
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`improved speed or
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`maneuverability” in milling machines like the ’693 patent, Gutman, or Bitelli. Id. at
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`63. The ALJ therefore rejected this combination and found the Challenged Claims
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`not obvious.
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`Relevant to Ground 3, the ALJ rejected Wirtgen’s proposed combination of
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`Gutman, Bitelli, and Busley. Id. at 60–61. The ALJ made this finding based both on
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`the fact that claim 1 was not obvious over Gutman and Bitelli, and because “Wirtgen
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`has failed to identify any credible motivation for combining Gutman with the
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`steering mechanism in Busley.” Id. at 60. The ALJ specifically rejected Mr. Arnold’s
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`expert opinion as “conclusory” and noted that Wirtgen failed to cite any evidence
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`showing how Busley’s steering system was relevant or adaptable to Gutman’s
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`machine. Id. The ALJ thus found the Challenged Claims not obvious over this
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`combination.
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`6
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`

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`III. PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) in the field of the ’693 patent
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`as of April 2001 would have had at least a bachelor’s degree in mechanical
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`engineering or a substantially similar subject and at least two years of experience
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`designing and developing construction machinery or other heavy machinery. Ex.
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`2008, ¶ 8. If a person did not have a bachelor’s degree, more experience in the field
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`could provide an acceptable substitute, and additional education in the relevant field
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`beyond a bachelor’s degree could compensate for less practical experience. Id. This
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`definition of a POSITA is not materially different than that set forth by Wirtgen’s
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`petition, and the patentability of the Challenged Claims does not depend on which
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`definition of a POSITA is adopted. See id. at ¶ 9.
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`IV. CLAIM CONSTRUCTION
`The applicable claim construction standard for this inter partes review is set
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`forth in 37 C.F.R. § 42.100(b) (2016) 1 , which explains that “[a] claim in an
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`unexpired patent . . . shall be given its broadest reasonable construction in light of
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`the specification of the patent in which it appears.” See Cuozzo Speed Techs., LLC
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`1 The petition was filed before the changes to the IPR claim construction standards
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`were announced in October 2018. Therefore, the broadest reasonable construction
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`standard still applies. See Paper 10 at 5–6.
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`7
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`

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`v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable construction
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`standard, claim terms are generally given their ordinary and customary meaning as
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`understood by a person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As
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`explained below, the Board should adopt Caterpillar’s proposed construction, which
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`is consistent with the ordinary meaning of the term at-issue as understood by a
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`person skilled in the art in light of the specification.
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`“A Retracted Position Relative to Said Frame”
`A.
`The ’693 patent describes a milling machine with a rear leg that is capable of
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`moving “between a projecting position and a retracted position relative to the
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`frame.” Ex. 1001 at 2:45–47. The plain language of the claims, the specification, the
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`prosecution history, and additional evidence shows that this term means that the
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`retracted position requires the wheel to be “within the outline of the frame.”
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`The claim language supports Caterpillar’s construction
`1.
`In the context of the ’693 patent, the claims show that the proper construction
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`of the term “a retracted position relative to said frame” is a position where the wheel
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`is inside the outline of the frame. To begin, the plain language of the claims set up a
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`dichotomy between two types of positions: those that are projecting and those that
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`are retracted relative to the frame. In particular, the claims discuss moving a wheel
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`“between a projecting position and a retracted position relative to said frame.” Ex.
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`8
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`

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`1001 at 9:33–37. Thus, the claims make clear that positions that are outside or
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`projecting from the frame are different than those inside or retracted within the
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`frame.
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`The specification supports Caterpillar’s construction
`2.
`Caterpillar’s construction is also supported by the specification of the ’693
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`patent. The Federal Circuit has long held that the specification is “the single best
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`guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1315 (Fed. Cir. 2005) (en banc).
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`Here, the specification begins by discussing several road milling machines.
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`When discussing the different positions the wheel can move to in these types of
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`machines, the patent explains that “a rear support wheel [] can be pivoted between
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`an interior or retracted position and an exterior or projecting position.” Ex. 1001 at
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`1:57–60 (emphasis added). The patent specifically equates the “retracted” position
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`with an interior position and a “projecting” position with an exterior position. In the
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`same background section, the patent explains that the retracted or “interior” position
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`is one in which the wheel is “in a retracted position relative to the general outline of
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`the frame.” Id. at 1:19–23 (emphasis added). Thus, the patent makes clear that the
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`retracted position is one in which the wheel is inside the frame. Ex. 2008, ¶ 42–45.
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`Additional portions of the patent only further reinforce that the “retracted”
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`position is within the outline of the frame. For example, the patent describes a
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`9
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`machine where “[t]he guide rod gear pivots the rear wheel . . . from the exterior
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`position to the retracted position.” Id. at 1:63–66. Thus, again, the patent equates
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`“exterior” with “projecting” and “interior” with “retracted.” Further, it contrasts
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`“exterior” and “retracted” positions. The patent makes clear that “exterior” positions
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`are projecting, unlike the retracted position, which is “interior.” The Federal Circuit
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`has long held that using terms interchangeably is a strong indication that the patentee
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`equated them. Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed.
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`Cir. 2009) (“The interchangeable use of the two terms is akin to a definition equating
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`the two.”); see SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1348
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`(Fed. Cir. 2016), rev'd in part on other grounds, 138 S. Ct. 1348 (2018) (applying
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`the same standard on appeal from the Board, using the “broadest reasonable
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`interpretation” standard).
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`The remainder of the specification is consistent with this construction and
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`shows that the retracted position is a position inside the frame. For example, when
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`describing the preferred embodiment, the patent explains that, to achieve its retracted
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`position, the “wheel 5 . . . [is] retracted inside the frame 2.” Id. at 5:29–33 (emphasis
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`added). Similarly, the patent discusses multiple positions of the track, stating that
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`maneuverability is ensured “in every position of the track 5 between the fully
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`projecting position 60 and the retracted position 70.” Id. at 7:44–47. Notably, the
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`patent describes the outermost possible position as the fully projecting position. Id.
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`10
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`

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`This is because positions that are less than “fully” projecting are still projecting
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`because they are also exterior to the frame. In contrast, it refers to the retracted
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`position as being only one position interior to the frame.
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`The ’693 patent’s figures further demonstrate that moving the track to a
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`retracted position relative to the frame means moving the track inside the outline of
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`the machine’s frame. For example, the description of Figure 3 of the ’693 patent—
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`the only figure showing the retracted position—is “a schematic top plan view . . .
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`with the rear wheel arranged in a retracted position relative to the frame.” Id. at
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`2:65–67 (emphasis added); see also id. at 7:37–39 (“the wheel 5 may be . . . retracted
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`relative to the frame 2 as shown in FIG. 3”). Figure 3, below on the left shows that
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`in the retracted position, the track is completely within the outline of the frame.
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`Conversely, Figure 2, below on the right, shows that in the “projecting” position, the
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`track is exterior or projecting relative to the frame.
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`Ex. 1001, ’693 Patent at Figs. 2 and 3 (annotated).
`Every aspect of the specification supports Caterpillar’s construction and
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`Wirtgen’s petition makes no argument to the contrary.
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`The prosecution history supports Caterpillar’s construction
`3.
`The prosecution history also supports Caterpillar’s construction. The
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`prosecution history should be used “when considering the legal issue of proper claim
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`construction,” and “[a]n examination of the prosecution history is particularly
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`important where, as in the instant case, the claimed invention is in a crowded art.”
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`Amhil Enter. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1560 (Fed. Cir. 1996); see Microsoft
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`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other
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`grounds by Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“The PTO
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`should also consult the patent’s prosecution history in proceedings in which the
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`patent has been brought back to the agency for a second review.”).
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`During prosecution, the examiner issued a rejection against the pending
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`claims based on U.S. Patent 6,443,687 (“Kaiser”). Ex. 1002 at 82–83. In response,
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`the applicant argued that the wheels of Kaiser “never retracted relative to the chassis,
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`as claimed by applicant (‘a retracted position relative to said frame’)[.]” Id. at 100.
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`The applicant explained that the “feature of retracting a wheel or track to a position
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`within the chassis is desirable in the case of a road mill, but would not be used . . .
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`in a machine of the sort described by Kaiser.” Id. (emphasis added). Thus, consistent
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`with the entirety of the specification, the applicant argued that that the prior art did
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`not meet the “retracted position relative to said frame” limitation because the wheels
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`did not move to “a position within” (i.e., inside) the frame. Id. In response, the
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`Examiner withdrew the rejections based on Kaiser and presented new rejections to
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`the claims. Id. at 181–83. This supports Caterpillar’s construction that the retracted
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`position must be within the outline of the frame.
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`4.
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`Caterpillar’s construction is consistent with how the term is
`used by others in the field
`Caterpillar’s construction is also consistent with how this term is used in the
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`industry. Another prior art reference cited by the ’693 patent describes the retracted
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`position as a “retracted position inside the frame.” See Ex. 1011 (Bitelli ’037).
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`Indeed, like the ’693 patent, the Bitelli ’037 equates these terms repeatedly. See id.
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`at ¶¶ 7–9, 11, 15, 20, 33, 41, 47, 49. This lends further support to Caterpillar’s
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`construction because it shows that the term had a well-understood meaning in the
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`art. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Prior art references
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`may be ‘indicative of what all those skilled in the art generally believe a certain term
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`means . . . [and] can often help to demonstrate how a disputed term is used by those
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`skilled in the art.’”).
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`WO 97/42377 (Busley) also uses the same terminology to describe its
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`“projecting” and “retracted” states. Describing the figure below, Busley states:
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`A left-side rear wheel 30 is rigidly mounted on the chassis frame 10 A
`right-side rear wheel is mounted on a pivotable supporting plate 33.
`This supporting plate is able to pivot about a pivot axis 34 at right-
`angles to the frame plane between a normal position shown by a solid
`line, in which the right-side rear wheel 32 projects beyond the inside
`contours of the chassis frame 10, and a retracted position which is
`shown by broken lines in the drawing and in which the rear wheel 32
`is located within the right-hand boundary line of the chassis frame 10.
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`Ex. 1017 at 7.
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`Id. at Fig. 1 Thus, just like the ’693 patent, Busley refers to positions within the
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`frame as “retracted” and those outside the frame as those that “project” from the
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`frame.
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`Dictionaries from the time of the invention also support Caterpillar’s claim
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`construction. For example, the New Shorter Oxford English Dictionary defines
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`“retract” as “[d]raw or pull (a thing) back in.” Ex. 2006, 4–5, retract, The New
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`Shorter Oxford English Dictionary (3rd ed. 1993). This reference further defines
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`“project” as “[p]lace in a protruding position; cause to jut or stand out.” Id. at 3,
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`“project.” If the “retracted” position is understood to simply be closer to the frame
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`than the projecting position, then it would contradict the dictionary definitions of the
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`word because such a position would still be projecting—it would be jutting out or
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`sticking out beyond the frame (the already-established point of reference). When the
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`swinging leg is within the frame it is no longer projecting, as no part of it is sticking
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`out beyond the frame. Consistent with the dictionary definition, it is “pull[ed] . . .
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`back in.” Id. at 4. These definitions show that the plain meaning of the terms supports
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`Caterpillar’s position.
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`Significantly, at his deposition, even Wirtgen’s expert Mr. Arnold
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`substantially agreed with Caterpillar’s construction. When describing the reasons for
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`having a swinging leg in the context of the ’693 patent, Mr. Arnold explained that
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`there are two positions for the leg: “one is the projected position, and one is the
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`retracted position . . . relative to the gen