Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 1 of 7 PageID #: 16951
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`Exhibit 7
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`Exhibit 7
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 2 of 7 PageID #: 16952
`Case: 19-2445 Document: 31-1 Page: 1 Filed: 12/20/2019
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`19-2445, -1911
`
`IN THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CATERPILLAR PRODOTTI STRADALI S.R.L., CATERPILLAR AMERICAS C.V.,
`CATERPILLAR PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Appellants,
`
`V.
`INTERNATIONAL TRADE COMMISSION,
`Appellee,
`WIRTGEN AMERICA, INC.,
`Intervenor.
`
`WIRTGEN AMERICA, INC.,
`Appellant,
`
`V.
`INTERNATIONAL TRADE COMMISSION,
`Appellee,
`CATERPILLAR PRODOTTI STRADALI S.R.L., CATERPILLAR AMERICAS C.V.,
`CATERPILLAR PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Intervenors.
`
`Appeal from the United States International Trade Commission in
`Investigation No. 337-TA-1067
`
`CORRECTED NON-CONFIDENTIAL BRIEF OF APPELLANTS
`
`James R. Barney
`David K. Mroz
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`(202) 408-4000
`
`Attorneys for Appellants
`Caterpillar Prodotti Stradali S.R.L.,
`Caterpillar Americas CV, Caterpillar Paving
`Products Inc., Caterpillar Inc.
`
`December 10, 2019
`
`
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 3 of 7 PageID #: 16953
`Case: 19-2445 Document: 31-1 Page: 31 Filed: 12/20/2019
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`The Commission failed to acknowledge that Figure 2 of Swisher expressly
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`shows the cutter drum located midway between the front and rear track assemblies,
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`negating any need to rely on inherency with respect to the drum’s location.
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`Appx194-195. The Commission also failed to address Caterpillar’s argument that,
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`even if not expressly shown, it would have been obvious to position Swisher’s cutter
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`drum such that it overlaps the pitch axis and therefore the widest transverse
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`dimension of the four-sided stability pattern. Appx194-195.
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`IV. SUMMARY OF ARGUMENT
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`The Commission’s finding of a violation of section 337 was predicated on
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`several legal errors and should be reversed.
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`First, it erroneously declined to construe the “controller configured to”
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`limitations in claims 2, 5, and 16 of the ’530 patent as means-plus-function terms.
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`Although these claims do not use the word “means,” they are nevertheless written in
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`classic means-plus-function format because they recite functions performed by a
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`specially programmed “controller” without reciting any algorithms for performing
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`those functions. The Commission erred by failing to recognize that, because the
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`claimed “controller” is a specially programmed processor and the claimed functions
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`are computer-implemented functions, the structure necessary to perform those
`
`functions—and thus the structure necessary to avoid § 112(6)—is an algorithm, not
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`a black-box controller/processor. Compounding this error, the Commission
`
`21
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 4 of 7 PageID #: 16954
`Case: 19-2445 Document: 31-1 Page: 32 Filed: 12/20/2019
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`ultimately adopted a construction based entirely on extrinsic evidence, failing to
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`consider or properly weigh the intrinsic evidence.
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`Second, the Commission erred in finding claims 2, 5, and 16 of the ’530 patent
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`nonobvious over the RX-500/Davis combination. The Commission misapplied this
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`Court’s bodily-incorporation doctrine by requiring detailed proof of how Davis’s
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`controller could be reprogrammed and bodily incorporated into the RX-500. The
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`Commission also misapplied the principle-of-operation doctrine by focusing on the
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`alleged fact that the RX-500/Davis combination would upend Davis’s principle of
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`operation, despite Davis being a secondary reference that provides a specific
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`teaching for modifying the RX-500. Under this Court’s jurisprudence, the relevant
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`question is whether the proposed combination would disrupt the principle of
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`operation of the reference being modified, i.e., the RX-500.
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`The Commission’s obviousness analysis also demanded much more detail
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`about the “controller” limitation in the prior art than is justified by the scant
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`disclosure in the ’530 patent. The ’530 patent discloses only a black-box controller
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`and a list of functions it performs. Wirtgen’s expert admitted that the ’530 patent
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`“isn’t a controller patent.” Appx10324-10325(324:6-325:3). Moreover, in
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`declining to apply § 112(6) to the “controller” limitations, the Commission relied on
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`Wirtgen’s assertion that a person of ordinary skill “would know how to select a
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`controller capable of performing the functions recited in claim 2 and how to
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`22
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 5 of 7 PageID #: 16955
`Case: 19-2445 Document: 31-1 Page: 33 Filed: 12/20/2019
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`configure that controller in the context of the recited milling machine.” Appx429.
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`Yet, inexplicably, the Commission found this same skilled artisan would not know
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`how to configure Davis’s controller to perform these same functions—functions that
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`Davis undisputedly teaches—in the context of the RX-500.
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`The Commission also erred in finding claim 23 of the ’530 patent nonobvious
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`over the RX-500 machine. Claim 23 does not require four displays as the
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`Commission held—it requires an “indicator device [that] is operable to display the
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`lifting positions of the two front lifting columns and two rear lifting columns.”
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`Appx574(9:50-55). Caterpillar presented unrebutted evidence that the RX-500 has
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`this capability because its two rear legs are hydraulically cross-connected and
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`therefore will have identical lifting positions on flat ground, such as during the
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`“setting to scratch” procedure. Appx10923-10927(923:21-927:11). This, in turn,
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`allows all four lifting positions to be displayed using only three measurements. Id.
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`Finally, the Commission erred in finding claim 29 of the ’309 patent
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`nonobvious over the Swisher/Neumeier combination by improperly applying a
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`heightened inherency standard to the question of whether Swisher actually (not
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`inherently) teaches or renders obvious a cutter drum located midway between its
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`front and rear legs. Caterpillar successfully carried its burden of showing that
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`Neumeier’s four-way positive coupling—the identical arrangement as disclosed in
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`the ’309 patent—inherently results in the four-sided stability pattern shown in Figure
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`23
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 6 of 7 PageID #: 16956
`Case: 19-2445 Document: 31-1 Page: 34 Filed: 12/20/2019
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`7 of the patent. Appx2919-2924; Appx3133-3142. Thereafter, inherency no longer
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`applied to the remainder of Caterpillar’s obviousness argument, including
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`Caterpillar’s showing that Swisher expressly teaches positioning the rotor midway
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`between the front and rear caterpillar, such that it overlaps the widest transverse
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`dimension of the stability pattern.
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`V. STANDARD OF REVIEW
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`This Court reviews legal determinations in section 337 investigations,
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`including claim construction, without deference. Alloc, Inc. v. ITC, 342 F.3d 1361,
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`1367-68 (Fed. Cir. 2003). It reviews the Commission’s factual determinations for
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`substantial evidence. 19 U.S.C. § 1337(c); 5 U.S.C. § 706.
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`Indefiniteness is a question of law that this Court reviews de novo, subject to
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`a determination of underlying facts. Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
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`811 F.3d 1334, 1343 (Fed. Cir. 2016). Likewise, “[o]bviousness is a question of law
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`based on underlying facts.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047
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`(Fed. Cir. 2016) (en banc).
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`24
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`Case 1:17-cv-00770-JDW Document 221-7 Filed 10/05/23 Page 7 of 7 PageID #: 16957
`Case: 19-2445 Document: 31-1 Page: 82 Filed: 12/20/2019
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`VII. CONCLUSION
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`For the reasons explained above, this Court should reverse the Commission’s
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`findings that claims 2, 5, 16, and 23 of the ’530 patent and claim 29 of the ’309
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`patent are not invalid and vacate its finding of a violation of section 337.
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`
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`Date: December 10, 2019
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`Respectfully submitted,
`
`
`
`
`
` /s/ James R. Barney
`James R. Barney
`David K. Mroz
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 408-4000
`james.barney@finnegan.com
`
`Attorneys for Appellants Caterpillar
`Prodotti Stradali S.R.L., Caterpillar
`Americas C.V., Caterpillar Paving Products
`Inc., Caterpillar Inc.
`
`
`72
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`
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