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`Exhibit S
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`Exhibit S
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`Trials@uspto.gov
` Paper 8
`571-272-7822 Entered: November 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`I. INTRODUCTION
`Caterpillar Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27 of U.S. Patent
`No. 8,308,395 B2 (Ex. 1001, “the ’395 patent”). Paper 2 (“Pet.”), 1.
`Wirtgen America, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized
`by statute only when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. For the reasons set
`forth below, we conclude that the information presented in the Petition
`establishes a reasonable likelihood that Petitioner will prevail in showing the
`unpatentability of at least one challenged claim of the ’395 patent.
`Accordingly, we institute an inter partes review as to all of the claims
`challenged in the Petition, on all of the grounds set forth in the Petition.
`
`A. Related Matters
`Petitioner and Patent Owner identify the following proceedings in the
`as related matters: Wirtgen America, Inc. v. Caterpillar, Inc., No. 1:17-cv-
`00770 (D. Del., filed June 16, 2017); Wirtgen America, Inc. v. Caterpillar
`Prodotti Stradali S.r.L., No. 0:17-cv-02085 (D. Minn., filed June 15, 2017);
`ITC Inv. No. 337-TA-1067 (“Road Milling Machines and Components
`Thereof”) (filed July 19, 2017). Pet. 77–78; Paper 5, 2. Petitioner also notes
`that the parties are in a pending dispute in Italy related to a foreign
`counterpart to the ’395 patent. Pet. 78. Patent Owner also identifies the
`following applications and patents that “claim or may claim the benefit of
`the priority of the filing date” of the ’395 patent: U.S. App. No. 13/671,786
`
`2
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`(issued as U.S. Patent No. 8,511,932) and U.S. App. No. 13/934,875 (issued
`as U.S. Patent No. 8,690,474). Paper 5, 1.
`
`B. The ’395 Patent
`The ’395 patent describes a road construction machine that treats road
`surfaces with a height-adjustable milling drum. Ex. 1001, Abstract. The
`machine includes a controller that receives values of the milling depth and
`slope via sensors, and adjusts the position of the milling drum to maintain a
`desired depth and/or slope. Id. at 3:62–4:12.
`
`According to the ’395 patent, milling machines with integrated
`levelling devices, sensors, and control systems were “already known” in the
`art. Ex. 1001, 1:11–15. The ’395 patent describes problems encountered
`during “the frequent change between the many different sensors, which is
`necessary for application-related reasons.” Id. at 1:36. For example,
`changing sensors typically involves interrupting the milling operation, which
`is necessary to prevent poor work results if the machine and the milling
`drum are not stopped during the sensor change. See id. at 1:36–53. To
`avoid these problems, an object of the invention of the ’395 patent is to
`provide a leveling device that allows for the change of sensors “without any
`interruption in the milling operation.” Id. at 1:54–58.
`
`To achieve this goal, the ’395 patent describes a leveling device
`having an indication and setting device for the sensors currently in use, and
`another indication and setting device for an additional sensor not in use that
`will then be exchanged for one of the sensors currently in use. Ex. 1001,
`1:62–67. The system allows for preparing a sensor with actual and set
`values while the operation continues, so that at the time of switchover, the
`sensor can “be changed without any alteration of the currently applicable
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`adjustment value.” Id. at 2:1–7.
`
`Figure 2 of the ’395 patent appears below.
`
`
`Figure 2 depicts the connection of exchangeable sensors A, B, C to leveling
`device 4 with two controllers 6a, 6c. Ex. 1001, 3:62–66, 4:44–45. Sensors
`A, B, C register the current actual value of the milling depth and/or slope of
`milling drum 3 relative to the road surface. Id. at 3:66–4:3. Leveling device
`4 includes indication and setting device 2 having three nearly identical
`indication and setting units 2a, 2b, 2c. Id. at 4:13–15, 4:45–47. Indication
`and setting units 2a, 2b, 2c set the operating parameters for sensors A, B, C.
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`4
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`Id. at 4:15–17. Controllers 6a, 6c automatically control the depth and/or
`slope of the milling drum based on predetermined set values and measured
`actual values, with adjustments made as necessary when the measured value
`departs from the predetermined set value. Id. at 4:6–11, 4:19–23.
`Controllers 6a and 6c remain in automatic mode during switchover to sensor
`B. Id. at 4:19–23. Switchover devices 10a and 10b allow a user to switch
`from sensor A or sensor C to sensor B, depending on which switchover
`device 10a or 10b is selected by the user. Id. at 4:28–34.
`The challenged claims include five independent claims—claims 1, 11,
`20, 26, and 27. Claim 1 is reproduced below:
`1. A road construction machine for the treatment of road
`surfaces, comprising:
`a milling drum, the milling drum being position adjustable with
`regard to at least one position characteristic selected from the
`group consisting of milling depth of the drum and slope of the
`drum; and
`a leveling system configured to control the at least one position
`characteristic, the leveling system including:
`a plurality of selectable sensors, each sensor configured to sense
`a current actual value of an operating parameter
`corresponding to at least one of the milling depth of the drum
`and the slope of the drum;
`a plurality of indication and setting devices, each of the
`indication and setting devices being associatable with at least
`one of the plurality of selectable sensors, each indication and
`setting device being operable to indicate the current actual
`value of and to set a set value for each operating parameter
`sensed by its associated sensor or sensors;
`a controller and switchover system configured to control the at
`least one position characteristic conditioned on set value or
`values and sensed current actual value or values of the
`operating parameter or parameters sensed by a selected subset
`
`5
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`of the plurality of selectable sensors by returning at least one
`adjustment value to adjust the at least one position
`characteristic so that the sensed current actual value or values
`of the operating parameter or parameters approach the set
`value or values for the selected subset of the plurality of
`selectable sensors; and
`the controller and switchover system being configured to switch
`over from control based upon a first selected subset of the
`plurality of selectable sensors to control based upon a second
`selected subset during milling operation without interruption
`of the milling operation and without any erratic alteration of
`the at least one adjustment value, the second selected subset
`exchanging at least one replacement sensor not in the first
`subset for at least one replaced sensor that was in the first
`subset.
`Ex. 1001, 7:2–41.
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22,
`24, 26, and 27 based on the following grounds (Pet. 24, 64): (1) claims 1, 3,
`5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27 as obvious under
`35 U.S.C. § 1031 based on Davis2 and Brabec;3 and (2) claims 1, 6, 8, 10,
`11, 16, 17, 19, 20, 24, 26, and 27 as obvious under 35 U.S.C. § 103 based on
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’395 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 U.S. Patent Pub. No. 2002/0047301, published April 25, 2002 (Ex. 1004,
`“Davis”).
`3 U.S. Patent Pub. No. 2002/0154948, published October 24, 2002
`(Ex. 1005, “Brabec”).
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`Davis and Krieg. 4 Petitioner also relies on the Declaration of Dr. David M.
`Bevly. Ex. 1002 (“Bevly Declaration”).
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person having ordinary
`skill in the art
`would have been someone having either: (1) a bachelor’s degree
`in mechanical engineering or an equivalent degree and two to
`five years of experience with machine control systems using
`sensors, or (2) seven to ten years of experience with machine
`control systems using sensors.
`Pet. 7 (citing Ex. 1002 ¶¶ 21–23). Patent Owner does not dispute
`Petitioner’s position, or offer its own assessment of the level of ordinary
`skill in the art.
`We determine, for the purposes of this Decision, that Petitioner’s
`proposed level of ordinary skill in the art is appropriate and we apply that
`definition here.
`
`B. Claim Construction
`The claim construction standard to be employed in an inter partes
`review recently changed. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51340 (October 11, 2018). At the time of the
`filing of the Petition in this proceeding, however, the applicable claim
`
`4 U.S. Patent No. 6,286,606 B1, issued September 11, 2001 (Ex. 1006,
`“Krieg”).
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`7
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`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) (2016); 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 a broadest
`reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification and
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`Petitioner does not argue for any particular claim constructions, and
`instead asserts that “the Board should apply the broadest reasonable
`construction to all claim terms in the ’395 patent.” Pet. 8 Patent Owner
`argues that Petitioner failed to construe the term “milling operation,” which
`should be construed to mean “the act of milling” rather than more broadly
`referring to operation of a milling machine. Prelim. Resp. 17. In support of
`its position, Patent Owner relies on the ’395 patent specification, which
`notes disadvantages in prior art machines that could not swap sensors
`“during milling operation without interruption of the milling operation and
`without any erratic alteration of the at least one adjustment value.” Id. at
`17–18 (citing Ex. 1001, 1:34–53, 2:7–14, 2:24–30, 2:37–42, 3:7–24, 3:25–
`29).
`
`For purposes of this Decision, we adopt Patent Owner’s proposed
`construction. The specification of the ’395 patent clearly distinguishes
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`swapping sensors “during [the] milling operation without interruption” from
`methods where the machine must be stopped to change sensors, even if the
`cutting drum continues to rotate and “cuts clear when standing.” Ex. 1001,
`1:34–53. Claim 1 also emphasizes that the sensor swap occurs not only
`without interruption of the milling operation, but also “without any erratic
`alternation of the at least one adjustment value,” which is a concern when
`swapping sensors during the act of milling, not when swapping sensors if the
`milling drum and machine are stopped. See Prelim. Resp. 5–6, 18. We
`therefore construe “milling operation” to mean “the act of milling.” We
`understand that Petitioner has not addressed this claim construction issue
`directly, and neither party has submitted expert testimony on the subject.
`We invite the parties to further address the issue, if necessary, during the
`trial.
`
`C. Obviousness Based on Davis and Brabec
`Relying on the Bevly Declaration, Petitioner alleges that Davis and
`Brabec render claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27
`obvious under 35 U.S.C. § 103. Pet. 24–64. We determine, on the current
`record, that Petitioner has established a reasonable likelihood of prevailing
`on its assertion that claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26,
`and 27 would have been obvious.
`1. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question of obviousness is resolved based on underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. 5 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–
`18 (1966).
`2. Overview of Davis
`Davis discloses “a road scarifier for cutting road surfaces.” Ex. 1004,
`Abstract. The scarifier includes cutting drum 11 for working road surface 12
`based on the position of hydraulic jacks that position cutting drum 11. Id. at
`¶¶ 32, 33.
`Petitioner’s annotated version of Figure 2 of Davis is reproduced
`below:
`
`
`5 Neither party addresses secondary considerations at this stage of the
`proceeding.
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`10
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`Figure 2 depicts cutting drum 11 and sensors 13, 14 along both sides
`of the scarifier. Ex. 1004 ¶ 32, 34. Front jacks 8 and 9 and rear jacks 7 and
`10 can be controlled hydraulically independent of one another so that cutting
`drum 11 can be parallel to the road surface or sloped at an incline relative to
`the road surface. Id. at ¶ 33. Sensors 13, 14 send their signals to data
`processing systems 16 and 17, and inclination sensor 18 sends a signal to
`data processing system 19. Id. at ¶¶ 35–37. In operation, each system 16,
`17, 19 compares the set parameters for cutting drum depth and angle to
`measured readings and sends control signals to the hydraulic system to
`eliminate any differences between the set and actual readings. Id. at ¶ 42.
`3. Overview of Brabec
`Brabec discloses an automatic mode in a controller for grading
`implements. Ex. 1005, Title. Brabec’s method allows a controller to
`recognize the unavailability of a sensor and to switch automatically to an
`alternative control mode using an additional sensor. Id. at Abstract. When
`the controller utilizes the additional sensor, the controller uses “the last
`known value for the alternative mode” as the set point. Id. The method
`“replaces manual intervention by the operator with a new automatic method
`of intervention by the controller.” Id. at ¶ 11.
`Petitioner’s annotated version of Brabec’s Figure 5 is reproduced
`below:
`
`
`11
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`Figure 5 depicts the use of alternate sensor 42 by controller 28 when right
`sensor 22 becomes unavailable and does not output a valid signal. Ex. 1005
`¶ 36. When this occurs, “[t]he last signal output by the alternative sensor 42
`prior to the right sensor 22 becoming unavailable is used as a set point for
`the right channel of the controller 28.” Id. In that way, Brabec’s system
`uses alternate sensor 42 to keep the right side in the same position as it was
`when right sensor 22 became blocked. Id.
`4. Discussion
`a. Claim 1
`Petitioner sets forth how the combination of Davis and Brabec
`discloses each limitation in claim 1. Pet. 31–45. Petitioner also sets forth
`reasons to combine Davis and Brabec. Id. at 25–31. Patent Owner does not
`challenge directly Petitioner’s explanations and supporting evidence as to
`claim 1. Patent Owner’s limited arguments relevant to the Davis/Brabec
`ground will be addressed further below.
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`Petitioner relies on Davis for its disclosure of a road scarifier that
`employs sensors and a controller to maintain a desired depth and slope of a
`cutting drum. Pet. 24. Petitioner relies on Brabec as disclosing a
`construction machine controller system that switches over to an alternate
`sensor without stopping machine operation. Id. According to Petitioner,
`one of ordinary skill in the art “would merely need to incorporate Brabec’s
`sensor swap functionality into Davis’s controller system to arrive at the
`claimed invention of the ’395 patent.” Id. at 25.
`More specifically, Petitioner alleges that Davis’s cutting drum 11, rear
`hydraulic jacks, and sensors 13, 14 disclose the claimed “milling drum,”
`“leveling system,” and “a plurality of selectable sensors.” Pet. 32–35 (citing
`Ex. 1002 ¶¶ 131–139; Ex. 1004 ¶¶ 23, 34, 37, 38, Figs. 1, 2, 5). Petitioner
`also alleges that Davis discloses the claimed “plurality of indication and
`setting devices” by relying on Davis’s sensors 13, 14, 18 sending signals to
`respective data processing systems 16, 17, 19. Id. at 36–38 (citing Ex. 1002
`¶¶ 140–143; Ex. 1004 ¶¶ 35–37, 41, Fig. 5). As to the limitation requiring a
`system “configured to control the at least one position characteristic,”
`Petitioner contends that Davis discloses the limitation because Davis’s data
`processing systems 16, 17, 19 compare the set values to actual readings,
`send signals representing the differences between the two values, and send
`control signals to the hydraulics to ensure the measured values approach the
`set values. Id. at 38–39 (citing Ex. 1002 ¶¶ 144–148; Ex. 1004 ¶ 42). As to
`the limitation requiring a system that switches sensors “to control based
`upon a second selected subset [of sensors] during milling operation without
`interruption of the milling operation,” Petitioner alleges that Brabec
`discloses a method of automatically switching to alternate sensor 42 in place
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`of right sensor 22 without interrupting the machine operation. Id. at 40–43
`(citing Ex. 1002 ¶¶ 149–155; Ex. 1005 ¶¶ 25–27, 35, 36, Figs. 4 and 5).
`Petitioner further contends that “Davis’s controller system modified with
`Brabec’s teachings would switch control of its cutting drum orientation to
`the unused sensor” and that it would have been “obvious to combine
`Brabec’s sensor swap functionality with Davis’s controller system for
`continuing milling operations even when a sensor used to control the during
`orientation becomes unavailable during milling operations.” Id. at 43–45
`(citing Ex. 1002 ¶¶ 149–164; Ex. 1004, Fig. 5).
`As to the motivation to combine Davis with Brabec, Petitioner
`contends that (1) Davis and Brabec are analogous art; (2) one of ordinary
`skill in the art would recognize that only two of Davis’s three sensors 13, 14,
`18 are necessary to control the depth and slope of its cutting drum; (3) one of
`ordinary skill in the art would have understood that if one of the two sensors
`being used to control orientation of Davis’s cutting drum became
`unavailable, it would be necessary to use another sensor to adequately
`control the drum orientation; and (4) one of ordinary skill in the art would
`have been motivated to apply Brabec’s sensor swap method to Davis in
`order to continue uninterrupted milling operations. Pet. 25–27 (citing Ex.
`1001, 1:34–38, 1:62–67; Ex. 1002 ¶¶ 71–76, 99–103, 106–113, 115–118;
`Ex. 1004 ¶¶ 34, 37, 42; Ex. 1005 ¶¶ 5, 35, 36; Ex. 1007, 18:34–44, 18:54–
`19:8). According to Petitioner, the motivation to make the proposed
`combination includes eliminating down time, reducing operating costs, and
`improving productivity. Id. at 27 (citing Ex. 1002 ¶ 119). Petitioner also
`alleges that the combination would be simple and involve “well-known
`technologies that would perform their known functions to produce
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`predictable results” and would have been “obvious to try.” Id. at 28–30
`(citing Ex. 1002 ¶¶ 104–105, 120–122; Ex. 1004 ¶ 42). Finally, Petitioner
`contends that one of ordinary skill in the art would have known how to
`combine Davis and Brabec, and would have had a reasonable expectation of
`success in doing so.” Id. at 30–31 (citing Ex. 1002 ¶¶ 123–126).
`Patent Owner raises two arguments in support of denial of institution
`based on Davis and Brabec. First, Patent Owner argues that Petitioner failed
`to provide a necessary construction for “milling operation” under our rules,
`and as a result, improperly conflated “milling operations” with “machine
`operations.” See Prelim. Resp. 13–16, 19–21. As discussed above, Patent
`Owner contends that the correct construction of “milling operations” is
`“during the act of milling,” which we adopt as our own construction for
`purposes of this Decision. Id. at 17–19. We are not persuaded that
`Petitioner’s failure to propose an express construction of “milling operation”
`warrants denial of institution, especially when Patent Owner does not even
`allege that the combination of Davis and Brabec fails to disclose switching
`sensors “without interruption of the milling operation” under Patent Owner’s
`own construction. Nor do we agree with Patent Owner’s position that
`Petitioner improperly conflated “milling operations” with “machine
`operations” as to the Davis/Brabec combination. Instead, based on our
`review of the Petition, it appears that Petitioner was careful not to allege that
`Brabec alone discloses changing sensors “without interruption of the milling
`operation,” and instead reserved that allegation for the proposed
`combination of Davis and Brabec—i.e., Petitioner gave weight to the
`“milling operation” requirement. See Pet. 27 (referring to “continue milling
`operations” when discussing proposed combination), 29 (same), 30 (same),
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`44–45 (same). Accordingly, with respect to the Davis/Brabec ground,
`Petitioner did not improperly ignore the “milling operations” aspect of claim
`1 and conflate the requirement with a more general “machine operations”
`requirement.
`Second, Patent Owner contends that we should exercise our discretion
`to deny institution as to both grounds because they are redundant of one
`another. Id. at 21–25. According to Patent Owner, the Petition lacks
`adequate explanation regarding the differences between Brabec and Krieg,
`and because the Davis/Krieg ground contains flaws, we should deny the
`entire Petition, including the Davis/Brabec ground. See id. at 22–25. We
`decline Patent Owner’s invitation to deny institution as to both grounds due
`to alleged weaknesses in the Davis/Krieg ground and the alleged redundancy
`between the two grounds. First, we are not obligated to exercise our
`discretion in this manner, and Patent Owner has not cited any cases, post-
`SAS, 6 that have taken a similar approach. Second, Patent Owner’s own
`disparate treatment of Krieg and Brabec—by arguing that the Davis/Krieg
`combination fails to disclose the “without interruption of the milling
`operation” limitation while not making a similar allegation regarding the
`Davis/Brabec combination—strongly suggests that the two grounds are not
`redundant.
`Based on the supporting Bevly Declaration and our review of the
`evidence, we determine that Petitioner has established a sufficient showing
`that the combination of Davis and Brabec discloses all of the limitations of
`claim 1. We also determine, based on the current record, that Petitioner
`
`
`6 SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1352–54 (2018).
`16
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 121-6 Filed 11/17/22 Page 18 of 23 PageID #:
`14200
`IPR2018-01091
`Patent 8,308,395 B2
`
`established sufficiently that one of ordinary skill would have been motivated
`to apply the teachings of Brabec to Davis.
`b. Remaining Claims
`Petitioner sets forth evidence and argument alleging that the
`combination of Davis and Brabec also discloses the limitations of claims 3,
`5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27. Pet. 46–64. Patent
`Owner does not challenge Petitioner’s explanations and supporting evidence
`as to these claims. Based on the present record, Petitioner explains
`sufficiently how the combination of Davis and Brabec satisfies the
`limitations recited in these claims.
`5. Summary
`Based on the evidence in the present record, Petitioner demonstrates
`sufficiently, for purposes of this decision, a reasonable likelihood of
`prevailing on its assertion that Davis and Brabec render obvious claims 1, 3,
`5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27.
`
`D. Obviousness Based on Davis and Krieg
`Relying on the Bevly Declaration, Petitioner alleges that Davis and
`Krieg render claims 1, 6, 8, 10, 11, 16, 17, 19, 20, 24, 26, and 27 obvious
`under 35 U.S.C. § 103. Pet. 64–77. Because we conclude, as discussed
`above, that Petitioner has met its burden of establishing that at least claim 1
`would have been obvious based on Davis and Brabec, we institute as to all
`claims and all grounds set forth in the Petition, including all claims
`challenged on the basis of Davis and Krieg. See SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348, 1352–54 (2018). We provide additional views regarding
`the Davis/Krieg ground to guide the parties during the trial.
`
`17
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`
`
`Case 1:17-cv-00770-JDW-MPT Document 121-6 Filed 11/17/22 Page 19 of 23 PageID #:
`14201
`IPR2018-01091
`Patent 8,308,395 B2
`
`
`Krieg discloses a grader that includes implement control system 12 for
`controlling work implement 14 such as a grader blade. Ex. 1006, 3:10–15.
`Selectively actuatable hydraulic lift cylinders 20 move blade sub-assembly
`16 to desired positions. Id. at 3:15–20. Krieg further discloses implement
`controller 28 that includes an “automatic” control mode. Id. at 3:60–64,
`4:32–36. In this mode, after a first grading pass but before a second grading
`pass, the implement controller swaps sensor assignments so that a mirror
`image angular grade can be produced on the second pass compared to the
`first pass. Id. at 6:1–3, 6:23–67.
`
`Petitioner relies on Davis as disclosing the same limitations discussed
`above in the context of the Davis/Brabec ground. See Pet. 70. Petitioner
`relies on Krieg as disclosing swapping sensors between passes, and when
`combined with Davis, the result satisfies the “without interruption of the
`milling operation” limitation. See id. at 70–74. More specifically, Petitioner
`alleges that “Davis’s controller system modified with Krieg’s teachings
`would switch control of drum orientation (i.e., depth and slope), for
`example, from left depth sensor 13 to the unused right depth sensor 14 when
`the right side surface or a right side curb of the roadway provides a better
`grade reference.” Id. at 74 (citing Ex. 1002 ¶¶ 284–292). According to
`Petitioner, one of ordinary skill in the art would have been motivated to
`make such a modification of Davis’s controller system “without stopping
`milling operations to switch sensors from the left side of the machine to the
`right side of the machine.” Id. Petitioner contends that the motivation to
`employ Krieg’s sensor swap stems in part from the recognition that “curbs
`on opposite sides of the roadway may provide a better grade reference” and
`the proposed combination would “reduce or eliminate operator errors caused
`
`18
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`
`
`Case 1:17-cv-00770-JDW-MPT Document 121-6 Filed 11/17/22 Page 20 of 23 PageID #:
`14202
`IPR2018-01091
`Patent 8,308,395 B2
`
`by manually reconfiguring the scarifier to use the different sensors.” Id. at
`67 (citing Ex. 1002 ¶¶ 272–274).
`Patent Owner raises the same arguments discussed above in the
`context of Davis and Brabec to the combination of Davis and Krieg. We
`find those arguments equally unconvincing here. For example, we do not
`view the Petition as failing to acknowledge the “milling operation”
`limitation of claim 1 in the context of Davis and Krieg, and that we should
`deny institution based on this failure alone. Instead, the Petition notes the
`requirement and the manner in which the combination allegedly discloses
`the limitation at several points. See, e.g., Pet. 67 (referring to milling
`operations in the context of the Davis/Krieg combination), 68 (same), 74
`(same).
`Patent Owner also argues that neither Davis nor Krieg disclose
`switching sensors during a milling operation. Prelim. Resp. 8–11. Instead,
`according to Patent Owner, “Krieg discloses switching sensors when
`reconfiguring the motor grader blade between a first grading pass in one
`direction and a second grading pass in another direction.” Id. at 11 (citing
`Ex. 1002 ¶¶ 62, 65–66, 264; Ex. 1006, 1:53–2:2, 4:55–63, 7:14–22); see also
`id. at 26–29. Patent Owner also contends that Krieg’s sensor swap serves a
`different purpose than the ’395 patent, and suffers from the same problems
`discussed in the background of the ’395 patent. Id. at 12–13.
`We agree with Patent Owner, based on the current record, that the
`Petition fails to establish that Krieg discloses swapping sensors during a
`milling operation, or that adding Krieg’s sensor swap functionality between
`passes to Davis would result in a machine that swaps sensors during a
`milling operation. See Prelim. Resp. 8–11, 26–29. As discussed above, we
`
`19
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`
`
`Case 1:17-cv-00770-JDW-MPT Document 121-6 Filed 11/17/22 Page 21 of 23 PageI
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