Case 1:17-cv-00770-JDW Document 250-46 Filed 10/25/23 Page 1 of 47 PageID #: 26831
`Case 1:17-cv-00770-JDW Document 250-46 Filed 10/25/23 Page 1 of 47 PagelD #: 26831
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`EXHIBIT 46
`EXHIBIT 46
`
`

`

`Case 1:17-cv-00770-JDW Document 250-46 Filed 10/25/23 Page 2 of 47 PageID #: 26832
`Paper 12
`Trials@uspto.gov
`571-272-7822
`Entered: February 7, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`IPR2022-01278
`Patent 8,424,972 B2
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

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`
`I.
`INTRODUCTION
`Background and Summary
`A.
`Caterpillar Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–10, 25, 27, 30, 31, 33, 34, and 36–40 of U.S. Patent No. 8,424,972
`B2 (Ex. 1001, the “’972 patent”). Paper 21 (“Pet.”). Wirtgen, Inc. (“Patent
`Owner”) timely filed a Preliminary Response to the Petition. Paper 11
`(“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter
`partes review may not be instituted “unless . . . 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). The Board
`determines whether to institute a trial on behalf of the Director. 37 C.F.R.
`§ 42.4(a) (2022).
`For the reasons set forth below, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that at least one of the
`challenged claims is unpatentable. Accordingly, we institute an inter partes
`review of all challenged claims and on all grounds asserted in the Petition.
`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating
`that a decision to institute is “a simple yes-or-no institution choice respecting
`a petition, embracing all challenges included in the petition”).
`B.
`Real Parties-in-Interest
`Caterpillar identifies itself as well as its subsidiaries Caterpillar
`Paving Products, Inc. and Caterpillar Prodotti Stradali S.r.L. as real parties-
`
`
`1 We refer to the public version of the Petition. Petitioner filed a
`confidential version of the Petition under seal as Paper 1.
`
`2
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`in-interest. Pet. 83. Wirtgen identifies itself and Wirtgen GmbH as real
`parties-in-interest. Paper 9, 2.
`C.
`Related Matters
`Petitioner and Patent Owner identify the following district court
`
`proceeding as a related matter: Wirtgen Am., Inc. v. Caterpillar, Inc., Case
`No. 17-770-RGA (D. Del.). Pet. 86; Paper 9, 2.
`
`Petitioner and Patent Owner also identify the following pending inter
`partes review proceeding as a related matter: IPR2022-01310 challenging
`additional claims of U.S. Patent 8,424,972 B2. Pet. 83; Paper 9, 2; see
`IPR2022-01310. We also note that IPR2022-01264 and IPR2022-01277
`between the same parties contain similar claims and challenges.
`D.
`The ’972 Patent
`The ’972 patent, titled “Road Milling Machine and Method for
`Positioning the Machine Frame Parallel to the Ground,” issued April 23,
`2013, from an application filed December 21, 2007. Ex. 1001, codes (22),
`(45), (54). The ’972 patent ultimately claims priority to a German
`application filed December 22, 2006. Id., code (30).
`The ’972 patent relates to “a self-propelled road milling machine,
`especially a cold milling machine, as well as a method for positioning the
`machine frame parallel to the ground.” Ex. 1001, 1:7–10. The ’972 patent
`explains that there are several known problems with known road milling
`machines where the machine frame does not extend parallel to the ground.
`The ’972 patent explains that “if the machine frame does not extend parallel
`to the ground, the stripping means will not rest on the ground with sufficient
`exactness behind the milling roller to allow for a residue-free stripping
`process to be performed on the surface under treatment.” Id. at 1:33–38.
`
`3
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`The ’972 patent further states that “if the machine frame is not arranged
`parallel to the ground, . . . material which has been milled off may intrude
`into the region between the band shoe and the still untreated ground
`surface.” Ex. 1001, 1:38–43. Additionally, the ’972 patent explains that in
`known machines “the milling depth can not be controlled accurately enough
`and that, for this reason, the milling depth has to be measured repeatedly by
`hand during the milling operation.” Id. at 1:46–49.
`The ’972 patent purports to address these problems, in one
`embodiment, through “the control device [that] automatically controls the
`lifting condition of at least one rear and/or front lifting column, as seen in
`the traveling direction, for positioning the machine frame parallel to the
`ground or traffic surface or for positioning the machine frame at a
`predetermined milling level.” Id. at 2:1–6. Figure 1 of the ’972 patent is
`reproduced below.
`
`Figure 1 “shows a cold milling machine.” Ex. 1001, 6:42. The
`milling machine includes machine frame 4 supported by a track assembly
`
`
`
`4
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`having two front chain tracks 2 and at least one rear chain track 3 through
`lifting columns 12, 13. Id. at 6:66–7:3. Lifting columns 12, 13 allow
`machine frame 4 to be moved to a predetermined inclined position with
`respect to the ground or traffic surface 8. Ex. 1001, 7:5–8. Machine frame 4
`supports milling roll 6, and arranged behind milling roll 6 is
`height-adjustable stripping means 14 which, in operation, has stripping
`plate 15 that engages milling track 17 formed by milling roll 6. Id. at
`7:16–21. A driver’s stand 5 is arranged above the milling roller 6 and
`provides a control panel for the vehicle operator that includes a control
`means 23 for controlling the milling depth of the milling roller 6. Id. at
`7:22–26. Position sensors measure the displacements of side plates 10, a
`beam 20, or stripping plate 15 with respect to machine frame 4 or relative to
`each other. Id. at 7:39–43.
`Figure 3 of the ’972 patent is reproduced below.
`
`
`Figure 3 depicts an embodiment of the claimed invention wherein
`
`hydraulic pistons or cylinders 26, 28 lift and lower the stripping plate 15 of
`the stripping means 14. Id. at 7:61–64. The depicted hydraulic cylinders
`
`5
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`have an integrated position sensing system that generate a position signal
`and have one end connected to the machine frame 4 and the other to
`stripping plate 15. Ex. 1001, 7:63–8:3. The ’972 patent explains that “[t]he
`control means 23 can calculate the current milling depth at the level of the
`milling roller axis from the position sensing signals received” and that “the
`control means 23 can automatically control the lifted condition of the front
`and/or rear lifting column 13 . . . to establish parallelism between the
`machine frame 4 and the ground.” Id. at 9:21–30.
`
`Illustrative Claim
`E.
`Among the challenged claims, claims 1, 31, and 38 are independent
`claims. Independent claim 1 is illustrative and is reproduced below.
`1. A self-propelled road milling machine, comprising:
`[1a] a machine frame;
`[1b] at least two front ground engaging supports, and at least one
`rear ground engaging support, with reference to a direction of
`travel;
`[1c] front and rear lifting columns supporting the frame from the
`ground engaging supports;
`[1d] a milling roller supported from the frame for treatment of a
`ground surface;
`[1e] first and second height adjustable side plates arranged on
`opposite sides of the milling roller;
`[1f] a height adjustable stripping plate arranged behind the
`milling roller and operable to be lowered, during operation,
`into a milling track generated by the milling roller;
`[1g] at least one ground engaging sensor; and,
`[1h] a controller operably associated with the at least one ground
`engaging sensor,
`the controller being configured
`to
`automatically control a lifting condition of at least one of the
`lifting columns to establish a parallel orientation of the
`machine frame relative to the ground surface in the direction
`of travel.
`Ex. 1001, 11:63–12:17 (bracketed nomenclature added).
`
`6
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`
`Prior Art and Asserted Ground
`F.
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
`Claims Challenged
`1–10, 25, 27, 30, 31,
`33, 34, 36–40
`
`35 U.S.C. §2 Basis
`103(a)
`OMM,3 Sehr,4 Samuelson5
`
`Pet. 6.
`Petitioner also relies on the declaration testimony of William
`Singhose, Ph.D. See Ex. 1006 (providing the Declaration).
`The following subsections provide brief descriptions of the asserted
`prior art references.6
`1.
`OMM (Ex. 1002)
`OMM is an operation and maintenance manual for the PM-465 cold
`planer that is used for cold milling pavement. Ex. 1002, Title, 2.7
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes to
`35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent application
`filed before March 16, 2013. Because neither part disputes that the
`application for the patent at issue in this proceeding has an effective filing
`date before March 16, 2013, we refer to the pre-AIA version of the statute.
`3 Caterpillar, “PM-465 Cold Planer, Operation & Maintenance Manual”
`(Ex. 1002, hereinafter “OMM” for consistency with the Petition).
`4 US 5,309,407, issued May 3, 1994 (Ex. 1037, “Sehr”).
`5 US 6,450,048 B1, issued Sept. 17, 2002 (Ex. 1004, “Samuelson”).
`6 When discussing prior art references, Petitioner typically italicizes the
`name of the reference. When we quote the Petition, we do not italicize the
`name.
`7 For ease of understanding our analysis of the Petition and Petitioner’s
`arguments, when referencing OMM, we follow Petitioner’s practice of citing
`the pagination of the manual, rather than the exhibit. Going forward, the
`parties must agree on the same citing format and cite to the exhibit page
`
`7
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`
`We reproduce below Petitioner’s annotated versions of the images
`depicted on pages 2 and 40 of OMM.
`
`
`
`The images on pages 4 and 42 of OMM are annotated by Petitioner to
`denote uncontested components of the milling machine. Pet. 8; see also
`Prelim. Resp. 9–11. In particular, Petitioner adds the title, “Self-propelled
`road milling machine” placed inside a red rectangle. Id. Petitioner also
`denotes the “machine frame,” “milling roller,” “front and rear lifting
`columns,” “front ground engaging supports,” and “rear ground engaging
`support,” by placing these terms in red rectangles and using a lead arrow that
`extends from a rectangle to its respective component. Id. OMM’s machine
`also includes Caterpillar’s “Grade and Slope Electronic Control System,”
`which includes, an “Electronic Control Module,” “grade/slope controllers on
`the left and/or right side of the operator's console, the grade/slope controllers
`
`
`numbers as a default approach. See 37 C.F.R. § 42.63(d)(2) (requiring
`sequential exhibit numbering).
`
`8
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`at ground level in front and/or behind the mandrel, a contacting or a
`non[-]contacting sensor on each side of the machine, [and] a slope sensor at
`the center of the machine.” Ex. 1002, 32. According to OMM, the
`contacting sensor can include a grade slope wheel as depicted in the image
`on page 49 of OMM, reproduced below.
`
`
`The image on page 49, on the left-hand side of the page, includes a
`black arrow denoting a grade slope wheel adjacent to the side plate of
`machine. Ex. 1002, 49. OMM explains that “[t]he grade slope wheel sends
`signals to the controller as the ground elevation varies.” Id. According to
`OMM, “[i]f the machine uses the non-contacting method of measuring the
`grade, a sonic sensor is attached. The sonic grade sensor uses sound waves
`to monitor the distance from a fixed point on the machine to a grade
`reference point (such as: finished surface, curb, gutter, or stringline).” Id.
`OMM notes that “[t]he sensors should be positioned on the centerline of the
`rotor to achieve an accurate cut. The further away from the center of the
`rotor, the less accurate the reading on the readout and the potential for less
`accurate cuts.” Id. at 48.
`
`9
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`
`Samuelson (Ex. 1004)
`2.
`Samuelson, titled “Hydraulic Cylinder Monitoring Apparatus,” issued
`September 17, 2002. Ex. 1004, codes (54), (45). Samuelson relates to “a
`hydraulic cylinder monitoring apparatus for a welded construction-type
`hydraulic cylinder.” Id. at 1:15–17. Samuelson discloses that hydraulic
`cylinders are used in various industries including “mobile equipment.” Id.
`at 1:35–40. Samuelson recognizes the importance of protecting the position
`measuring structure, e.g. transducer, of the cylinders, while being able to
`interchange “dumb” cylinders without transducers to “smart” cylinders. Id.
`at 1:45–60. Figures 5 and 6 of Samuelson are reproduced below.
`
`
`Figure 5 is a cross sectional view of a hydraulic cylinder having a
`monitoring apparatus disposed therein, and Figure 6 is an enlarged view of
`the circled portion shown in Figure 5. Ex. 1004, 2:53–57. Samuelson
`discloses that in operation, hydraulic cylinder 10 is connected at ends 53
`
`10
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`and 54 to two objects that need to be selectively controlled by being
`separated and then moved back together while the relative spacing is
`monitored by the transducer structure 23 and 24. Id. at 4:17–21.
`Samuelson explains that in Figure 5, a controller, not shown, is
`sensing the position of piston 12 with respect to cap 22 through reference
`supply and/or ground return wires 41 and 41a, which have fixed resistors.
`Id. at 4:22–26. Similarly, output wire 45 is connected to the controller. Id.
`at 4:27–28. According to Samuelson, when pressurized hydraulic oil is
`directed into port 19, cylinder 12 moves to the right and follower 24 will
`move with it, which will change the resistance. Id. at 4:29–33.
`“Consequently, the position of the piston (12) and/or rod (13) can readily be
`monitored as the piston (12) and rod (13) move from one position to another
`within the cylinder (11).” Id. at 4:41–44. Samuelson notes that “[b]ecause
`the fixed resistors (42) and (43) are disposed within the steel confines of the
`supplemental cap (22) and its flange (20), there is very little chance that they
`can be damaged during the use of the device.” Id. at 4:48–51.
`3.
`Sehr (Ex. 1037)
`Sehr, titled “Ultrasonic Control Unit for a Traveling Cutter,” issued
`May 3, 1994. Ex. 1037, codes (54), (45). Sehr “relates to an ultrasonic
`control unit for a travelling cutter.” Id. at 1:5–6. We reproduce Sehr’s
`Figure 1, below.
`
`11
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`
`
`
`Figure 1 depicts a “a road grooving machine” with a “cutter drum 2,
`which is rotatably supported on the road grooving machine, as well as front
`and rear travelling gears 3, 4” and “at least three ultrasonic sensors 10, 11,
`12, which are arranged one behind the other essentially in the direction of
`movement of the road grooving machine 1.” Id. at 2:7–10, 2:24–27. The
`ultrasonic sensors in Sehr sample a “reference plane” with their “sound
`cones,” and the sampled plane “is normally a marginal strip of a road whose
`surfacing has to be removed by cutting down to a predetermined depth.” Id.
`at 2:27–31. Sehr further discloses that the control unit “compensates
`substantially for the waviness of the reference plane, and it facilitates the
`work of the operator of the road grooving machine by holding the road
`grooving machine in a parallel position.” Id. at 3:53–60.
`4.
`Zarniko (Ex. 1005)
`The parties address Zarniko as background prior art in their arguments
`even though Petitioner does not rely on it as disclosing any particular claim
`
`12
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`limitations. Accordingly, we summarize Zarniko’s disclosure in this section
`addressing relevant “Prior Art.”
`Zarniko, titled “Height Control Device and Method for a Fixture for
`Machining an Object Essentially Defined by a Single Plane,” issued July 24,
`1990. Ex. 1005, codes (54), (45). Zarniko “relates to a height control device
`for . . . a milling fixture for stripping road surfacing.” Id. at 1:6–10. Zarniko
`discloses a height control device that “provides for two gauging devices, one
`of which measures the distance to the unmachined plane, the other, the
`distance to the machined plane.” Id. at 2:32–34. We reproduce Zarniko’s
`Figure 1, below.
`
`
`Figure 1 depicts “a schematic front view of a milling fixture for
`stripping road surfacing and featuring a height control device in accordance
`with” Zarniko’s invention. Ex. 1005, 3:27–29. Milling fixture 1 includes
`bearing frame 2 and milling cutter 3. Id. at 3:36–37. Zarniko’s height
`control device includes first ultrasonic transceiver 6, second ultrasonic
`transceiver 7, and third ultrasonic transceiver 8 secured to bearing frame 2.
`
`13
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`Id. at 3:57–61. First and third ultrasonic transceivers 6, 8 are positioned
`outside the cutting width of milling cutter 3, so that these transceivers “can
`gauge the distance to the unmachined plane of the road surfacing by sensing
`the ultrasonic propagation time.” Id. at 3:62–66. Second ultrasonic
`transceiver 7 is configured to gauge the distance to the road surface after the
`surface is machined by milling cutter 3. Id. at 3:67–4:1.
`
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`
`II. ANALYSIS
`Legal Standards
`A.
`Section 103 forbids issuance of a patent when “the differences
`between the subject matter sought to be patented 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 question of obviousness is resolved on the basis of 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 ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`
`
`8 The parties do not direct us to any objective evidence of non-obviousness
`at this stage of the proceeding.
`
`15
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`Id. at 417. To support this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”). As a factfinder, we also must be
`aware “of the distortion caused by hindsight bias and must be cautious of
`arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.
`B.
`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). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id. Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`
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`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level
`of ordinary skill, we also may look to the prior art, which may reflect an
`appropriate skill level. Okajima, 261 F.3d at 1355.
`Petitioner asserts that a person of ordinary skill in the art would have
`had “at least a four-year degree in mechanical engineering or a closely
`related field and at least two years of experience designing, developing,
`servicing or operating heavy machinery, including their components and
`control systems.” Pet. 6 (citing Ex. 1006 ¶ 23). Petitioner also states that
`“[a]dditional education could substitute for professional experience, and
`significant work experience—such as working with, servicing, or operating
`heavy machinery in the field—could substitute for formal education.” Id.
`“Patent Owner does not dispute the Petition’s definition” at this stage
`of the proceeding. Prelim. Resp. 16.
`For purposes of this Decision, based on the prior art, the
`sophistication of the technology at issue, and Dr. Singhose’s Declaration
`testimony, we adopt Petitioner’s undisputed definition of the level of
`ordinary skill.
`
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`
`Claim Construction
`C.
`We construe each claim “using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. [§]
`282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are
`generally given their ordinary and customary meaning as would have been
`understood by a person of ordinary skill in the art at the time of the invention
`and in the context of the entire patent disclosure. Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently
`stated that the words of a claim ‘are generally given their ordinary and
`customary meaning.’” (citations omitted)).
`
`Petitioner contends that “[t]he prior art renders all challenged claims
`unpatentable under the plain and ordinary meaning of the claims.” Pet. 6.9
`“Patent Owner does not believe that any claim terms need construction to
`resolve the grounds raised in the Petition.” Prelim. Resp. 16.
`We determine that we need not expressly construe any claim terms to
`resolve the parties’ disputes on the record before us. See Realtime Data,
`LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required
`to construe ‘only those terms that . . . are in controversy, and only to the
`extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent
`that the scope of any particular claim term requires discussion, however, we
`provide it in our assessment of the challenges, which we turn to next.
`
`
`9 Petitioner “notes that the parties exchanged preliminary claim
`constructions in the parallel litigation,” and provides the construction for two
`terms from that litigation, “controller” and “ground engaging sensor,” but
`argues that “[t]hose constructions are irrelevant to the outcome here and the
`Board thus need not address them.” Pet. 6–7.
`
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`IPR2022-01278
`Patent 8,424,972 B2
`
`
`D. Ground 1: Claims 1–10, 25, 27, 30–31, 33–34, and 36–40 as
`unpatentable over OMM, Sehr, and Samuelson
`Petitioner contends that the combination of OMM, Sehr, and
`Samuelson teaches or suggests each limitation of claims 1–10, 25, 27,
`30–31, 33–34, and 36–40. Pet. 6, 20–82. We first address Petitioner’s
`reasons for combining the teachings of OMM, Sehr, and Samuelson and then
`address Petitioner’s arguments and evidence directed to specific claim
`limitations.
`1.
`
`Petitioner’s proposed combination of OMM, Sehr, and
`Samuelson
`We first present Petitioner’s reasoning for combining the teachings of
`OMM, Sehr, and Samuelson to arrive at the subject matter of the claims
`challenged under Ground 1. We then present Patent Owner’s counter
`arguments, and our analysis of the reasoning.
`a)
`Petitioner’s reasoning
`Petitioner contends that OMM, Sehr, and Samuelson are analogous
`art, as all three references are in the same field of endeavor and reasonably
`pertinent to the problem that the ’972 patent attempts to solve. Pet. 20–22
`(citing Ex. 1002, 2, 32, 48–49, 52; Ex. 1004, 1:35–63, 2:28–31, 4:17–47; Ex.
`1006 ¶¶ 62–63; Ex. 1037, code (57), 1:60–63, 2:44–54); cf. In re Bigio, 381
`F.3d 1320, 1325 (Fed. Cir. 2004) (“References . . . qualify as prior art for an
`obviousness determination only when analogous to the claimed invention.”).
`Patent Owner does not dispute, at this stage of the proceeding, that OMM,
`Sehr, and Samuelson are analogous art.
`Petitioner contends that a person of ordinary skill in the art
`(“POSITA”) would have been motivated to incorporate Sehr’s “sensor-
`driven parallel orientation adjustments, which provides for parallelism in the
`
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`Patent 8,424,972 B2
`
`direction of travel, into the machine described by OMM.” Pet. 22 (citing
`Ex.1006 ¶¶ 64–65). Petitioner notes that PM-465 already has a “grade-and-
`slope system [with] controllers that receive signals from multiple sensors,
`and this information is used to control the drum’s milling depth by adjusting
`the ‘heights of the legs.’” Id. (citing Ex. 1002, 32, 48–49). Petitioner
`contends that Sehr discloses a similar system that relies on sensor data “for
`the vertical adjustment of the front as well as of the rear traveling gear
`height adjustment means.” Pet 22 (citing Ex. 1037, 3:48–52). Petitioner
`further argues that because both systems use systems to adjust the
`orientation of their respective machines by changing the height of the lifting
`columns that “[a] POSITA would have understood that incorporating Sehr’s
`orientation adjustments would require nothing more than the use of
`additional sensors.” Id. at 22–23 (citing Ex.1006 ¶ 64). Petitioner asserts
`that this modification would have a reasonable expectation of success
`because the state of the art recognizes “‘[t]hose skilled in the art can readily
`write software for implementing’ sensors in road-milling machines.” Id.
`(citing Ex. 1050, 4:19–24).
`Petitioner argues that there are several benefits that a POSITA would
`recognize from this modification. Pet. 23. First, Petitioner contends that
`Sehr’s system permits more accurate adjustment of the cutting depth in the
`milling process. Id. (citing Ex. 1037, 1:60-63; Ex. 1006 ¶ 65). Second,
`Petitioner argues that Sehr’s system avoids cutting depth faults and can
`compensate for a wavy reference plane while assisting the operators work by
`holding the machine in a parallel position. Id. (citing Ex. 1037, 3:53–61).
`According to Petitioner, a “POSITA would have recognized that these
`
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`Patent 8,424,972 B2
`
`benefits would apply to and improve OMM, thus further motivating a
`POSITA to modify OMM with Sehr’s parallel adjustment mechanism.” Id.
`Next, Petitioner turns to a further modification of OMM and Sehr with
`Samuelson. Petitioner contends that a person having ordinary skill in the art
`“would have been motivated to implement Sehr’s parallel adjustment system
`in OMM by using sensor-integrated cylinders like Samuelson’s in the PM-
`465’s legs.” Pet. 24–34 (citing Ex. 1006 ¶¶ 66–80). Petitioner asserts that
`the prior art already shows how to use sensors on the front and rear legs of a
`road-milling machine. Id. (citing Exs. 1052–1054 (discussing the Roadtec
`RX-500 road milling machine)).
`Petitioner presents several benefits that would inspire a POSITA to
`make the proposed modification. First, Petitioner contends Sehr’s parallel-to
`ground orientation avoids cutting depth faults caused by undesirable
`inclination angles and allows the system to compensate for waviness of the
`reference plane. Pet. 25 (citing Ex. 1037, 3:53-61). Second, the parallel-to-
`ground orientation promotes machine stability and improves the operator’s
`comfort. Id. (citing Ex. 1006, ¶ 68; Ex. 1037, 3:53-61).
`As to the stability, Petitioner contends road-milling machines can
`become unstable if the elevation differs too much or they encounter uneven
`terrain. Pet. 25–26 (citing Ex. 1057 (explaining controlling the legs of
`milling machines can prevent instability); Ex. 1058 (explaining improper
`control can be “detrimental to stability of the m