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`EXHIBIT 48
`EXHIBIT 48
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`EXHIBIT 48
`EXHIBIT 48
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`Paper 42
`Entered: May 21, 2019
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`Trials@uspto.gov
`Tel: 571-272-7822
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`
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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 IPR2017-02187
`Patent 9,644,340 B1
`_______________
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a) and 37 C.F.R. §§ 42.64(c), 42.73
`
`
`
`
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`
`I. INTRODUCTION
`Caterpillar Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–5, 7–12, and 14–17 of U.S.
`Patent No. 9,644,340 Bl (Ex. 1001, “the ’340 patent”). Wirtgen America,
`Inc. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 8
`(“Prelim. Resp.”).
`We concluded that Petitioner satisfied the burden, under 35 U.S.C.
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), we instituted
`an inter partes review of all the challenged claims, claims 1–5, 7–12, and
`14–17, on all the grounds asserted in the Petition. Paper 11 (“Dec. Inst.”).
`Patent Owner filed a Response to the Petition (Paper 22, “PO Resp.”).
`Petitioner filed a Reply (Paper 28, “Pet. Reply”), and Patent Owner filed a
`Sur-reply (Paper 34, “PO Sur-reply”).
`Petitioner submitted forty-four exhibits (Exs. 1001, 1102–1139, 1142–
`1144, 1149, 1150). Petitioner relies, in part, on the opinion testimony of Lee
`A. Horton, P.E.1. See Ex. 1102.
`
`
`1 Mr. Horton earned a Bachelor of Science in Mechanical Engineering,
`majoring in Machine Design, and a Master of Business Administration,
`majoring in Operations and Technology Management. Ex. 1102 ¶ 7.
`Mr. Horton has been a Licensed Professional Engineer since 1985. Id. ¶ 5.
`Mr. Horton has held engineering and management position in a number of
`companies involved in manufacturing construction equipment. Id. ¶¶ 8–11.
`Mr. Horton is a named inventor on twenty-two U.S. patents, largely focused
`
`2
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`
`Patent Owner submitted four exhibits (Exs. 2005, 2007, 2010, 2011).
`Patent Owner relies, in part, on the opinion testimony of Dr. John Meyer.2
`See Ex. 2007.
`Patent Owner filed a Motion to Exclude certain exhibits. Paper 33
`(“Mot. Excl.”). Petitioner filed an Opposition to the Motion to Exclude.
`Paper 36 (“Resp. Mot. Excl.”). Patent Owner filed a Reply. Paper 39
`(“Reply Mot. Excl.”).
`A hearing was held January 29, 2019. Paper 41 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has proven by a preponderance of the evidence that claims 1–5, 7–
`12, and 14–17 are unpatentable.
`
`Related Matters
`A.
`Petitioner states the ’340 patent is currently being asserted by Patent
`Owner against “Caterpillar entities” in three U.S. proceedings: (1) ITC
`Investigation No. 337-TA-1067, entitled “Road Milling Machines and
`
`
`on machine design, including hydraulic latch pins, tool coupling, fluid
`connectors, and excavation tools. Id. ¶ 12.
`2 Dr. Meyer earned a Bachelor of Science in physics, a Master of Science
`and a Ph.D., each in mechanical engineering. Ex. 2007 ¶ 11. He is a
`licensed Professional Engineer in the state of Illinois. Id. Dr. Meyer has
`spent his career as a consulting engineer. Id. ¶¶ 6–8. His areas of
`specialization include computer-aided modeling and simulation, testing, and
`analysis of machine design, usage, and safety. Id. ¶ 6.
`
`3
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`Components Thereof,” filed on July 19, 2017; (2) a complaint for patent
`infringement in the District of Minnesota against “several Caterpillar
`entities,” filed on June 15, 2017, asserting several patents, including the ’340
`patent; and (3) a complaint for patent infringement in the District of
`Delaware against “several Caterpillar entities,” filed on June 16, 2017,
`asserting the “same patents.” Pet. 75.
`Patent Owner also identifies these same three proceedings as related
`matters, providing the following citations for the two district court cases
`identified by Petitioner: Wirtgen America, Inc. v. Caterpillar, Inc., Civ. No.
`1:17-cv-00770 (D. Del., June 16, 2017); Wirtgen America, Inc. v.
`Caterpillar Prodotti Stradali S.r.L. et al., Civ. No. 0:17-cv-02085 (D. Minn.,
`June 15, 2017) Paper 4, 2.
`The two District Court cases have been stayed pending a final
`outcome of the ITC investigation. See Exs. 3001, 3002. The validity issues
`in the ITC proceeding are similar to the patentability issues in the IPR
`proceeding before us. Accordingly, we provide some background on the
`status of the ITC proceeding
`1. Status of the ITC Proceeding
`Patent Owner, Wirtgen America, Inc., filed a complaint with the ITC
`alleging that Petitioner in the proceeding before us and other Caterpillar
`entities imported road milling machines and related components that
`infringed five patents, including the ’340 patent. Ex. 3004, 1.3 The
`
`
`3 Exhibit 3004 was downloaded from the ITC Electronic Document
`Information System (EDIS). It is the ITC Final Initial Determination (ID”),
`
`4
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`Commission instituted an investigation that included whether claims 1–5, 7–
`12, and 14–17 of the ’340 patent were infringed by the imported machines.
`Id. These are the identical claims challenged in this IPR proceeding. Pet. 1.
`Patent Owner filed unopposed motions to terminate the ITC investigation
`concerning the ’340 patent for all but four claims, claims 4, 5, 9, and 12. See
`Ex. 3005 (granting Wirtgen’s [PO’s] unopposed motion terminating the
`investigation for claims 2, 3, 8, 10 and 14–16 of the ‘340 patent); Ex. 3006
`(granting Wirtgen’s [PO’s] unopposed motion terminating the investigation
`for claims 1, 7, 11, and 17 of the ’340 patent). Thus, for the ’340 patent,
`only claims 4, 5, 9, and 12 remained for ITC consideration.
`Caterpillar asserted that claims 4, 5, 9, and 12 would have been
`obvious based on four references, taken alone or in various combinations,
`resulting in five grounds of asserted invalidity, each of which was based on
`35 U.S.C. § 103. See Ex. 3004, 285 (“Obviousness – Marini MP 1300”);
`310 (“Obviousness – Marini MP 1300 in View of Overton”); 316
`(“Obviousness – PM-565”); 335 (“Obviousness – PM-565 in View of
`Overton”); and 339 (“Obviousness – ‘combination of the PM-565 with MP
`1300’”).
`The only reference in the ITC proceeding that is related to a reference
`in the IPR proceeding before us is the “PM-565” reference. In the ITC
`proceeding, the “PM-565” reference included Caterpillar’s Model PM-565
`
`
`in Inv. No. 337-TA-1067. It is the same as Exhibit 2011 filed by Patent
`Owner. They are the same decision, an ITC Final Initial Determination,
`although their formatting and pagination differ. Exhibit 2011 is a Westlaw
`version; Exhibit 3004 is the original document from the ITC. Because other
`ITC documents refer to the original ITC document pagination, we also will
`cite to Ex. 3004 when citing to the ITC Final Initial Determination.
`
`5
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`machine and various “contemporaneous manuals” related to the machine.
`Ex. 3004, 316. One of these “contemporaneous manuals was the “PM-565
`Operation & Maintenance Manual.” Id. As stated below, the PM-565
`reference in the IPR proceeding before us also is titled “Operation &
`Maintenance Manual” for Caterpillar’s model PM-565 Cold Planer milling
`machine. See Ex. 1105.
`The Initial Determination (“ID”) in the ITC proceeding was that
`“Caterpillar has shown, through clear and convincing evidence, that claims
`4, 5, 9, and 12 of the ’340 Patent would have been obvious in light of the
`PM-565.” Ex. 3004, 436 (see Finding No. 37). As stated in the ID, the
`evidentiary burden in the ITC proceeding for proving invalidity is “clear and
`convincing evidence.” Id. As stated above, the evidentiary burden of
`proving unpatentability in an IPR proceeding is “a preponderance of the
`evidence.” 35 U.S.C. § 316(e).
`On April 17, 2019, the Commission modified the ID, in part, as to a
`conclusion concerning claim 36 of U.S. Patent No. 7,828,309. Ex. 3003, 2.
`The Commission determined not to review the remainder of the ID. Id.
`Thus, the conclusion in the ID that “Caterpillar has shown, through clear and
`convincing evidence, that claims 4, 5, 9, and 12 of the ’340 Patent would
`have been obvious in light of the PM-565” (see Ex. 3004, 436 (Finding No.
`37)) remains as the conclusion of the ITC.
`
`Asserted Grounds
`B.
`The ’340 patent includes 18 claims. Petitioner challenges in this
`proceeding only claims 1–5, 7–12, and 14–17. Petitioner contends that each
`
`6
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`of the challenged claims is unpatentable under 35 U.S.C. § 1034 based on the
`following three grounds (e.g., Pet. 24, 54, 78):
`
`References
`PM200 Manual5 and Riach6
`
`PM-5657 and Riach
`Kishimoto8, Wirtgen9, and Riach
`
`
`Claims challenged
`1–5, 7–12, and 14–17
`
`1–5, 7–12, and 14–17
`
`1–5, 7–12, and 14–17
`
`Mr. Horton opines that each of the challenged claims is “unpatentable
`as being obvious over” the applied references. Id. ¶ 4.
`
`The ’340 Patent
`C.
`The ’340 patent relates generally to a scraper device for a road milling
`construction machine. E.g., Ex. 1001, 1:6–12; 4:9–11, 17–18. The ’340
`patent disclosure focuses on the scraper device. Before focusing on the
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any application filed
`before March 16, 2013. Because the application for the patent at issue in
`this proceeding has an effective filing date before either of these dates, we
`refer to the pre-AIA versions of the statute.
`5 PM200 Cold Planer Operation and Maintenance Manual No. QEBU2062
`(Ex. 1103, “PM200 Manual”).
`6 International Patent Application Publication No. WO2004/081289
`(Ex. 1104, “Riach”).
`7 PM-565 Cold Planer Operation and Maintenance Manual No. KEBU6664-
`02 (Ex. 1105, “PM-565”).
`8 U.S. Patent No. 5,695,256 (Ex. 1106, “Kishimoto”).
`9 U.S. Patent No. 4,723,867 (Ex. 1107, “Wirtgen”).
`
`7
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`disclosed and claimed invention, however, we describe the context for the
`scraper device, which is a road-milling machine.
`Patent Owner provides the following pictorial representation10 of a
`road milling machine in operation. PO Resp. 4.
`
`
`
`Pictorial representation of a road milling machine
`in operation. PO Resp. 4.
`A road milling machine uses a milling drum to grind up and remove
`asphalt or concrete from roadways. PO Resp. 3. The milled material is
`directed to a material removal device, such as a conveyor belt, that feeds into
`a hauler truck for removal from the job site. Ex. 2007 ¶ 39. A milling drum,
`coupled to the milling machine frame, contains cutting bits, or teeth, which
`scrape surface material, such as asphalt, from the road. Id. ¶ 40. The cutting
`
`
`10 The pictorial representations in the Response are not exhibits and are not
`evidence. They are cited as helpful illustrations of Patent Owner’s
`arguments and the machine disclosed in the ’340 patent.
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`8
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`bits direct milled material to the center of the drum and then onto the
`conveyor belt. Id.
`The milling drum with cutting bits is shown in the following pictorial
`representation of a road milling machine. PO Resp. 5.
`
`
`Cutaway side view pictorial representation of a milling drum
`with cutting bits within a casing attached to the machine frame.
`An annotated version of Figure 1 from the ’340 patent, provided in
`Dr. Meyer’s Declaration, (see Ex. 2007 ¶ 42) is reproduced below. Figure 1
`from the patent also is reproduced below.
`As shown in the annotated figure below, traveling devices (red), such
`as tracks, wheels, or caterpillars, propel the machine forward or backward
`over the ground. Id. The work drum (dark blue), also called a working
`roller, rotor, or milling drum, constitutes the main working device. Id. A
`scraper blade (orange) glides along the ground surface behind the milling
`drum, directing millings and debris generated by the work drum towards the
`conveyor. The focus of the claimed invention is pivotable movement of a
`two-part scraper blade (orange) shown in the annotated figure below.
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`Annotated Figure 1 is an automotive road milling machine
`with a scraper device according to the invention. Ex. 2007 ¶ 42.
`
`
`
`
`Figure 1 from the ’340 patent is an automotive road milling machine
`with scraper device (7) according to the invention.
`
`10
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`
`As illustrated in the cutaway side view pictorial representation above,
`and as shown specifically in Figure 1 of the ’340 patent above, milling drum
`6 is surrounded by drum casing 7 attached to machine frame 4. Ex. 1001,
`4:41–42. The rear of the casing, based on the direction of travel, includes a
`“scraper device.” Id. at 4:42–45. The scraper device includes a scraper
`blade that glides over the ground surface milled off by the milling drum.
`Id. at 4:44–48.
`One embodiment of the scraper device is shown in Figures 2 and 4
`from the ’340 patent, reproduced below.
`
`
`
`Figure 2 (left) is a scraper device in its lowered, operating position.
`Figure 4 (right) is a scraper device in its raised and swivelled position.
`According to Patent Owner, prior art scraper blades typically were
`locked in a substantially vertical position to facilitate collection of milled
`material. PO Resp. 1. For servicing the milling drum, prior art scraper
`blades were hinged to permit pivoting around a swiveling axis. Id. Thus,
`operators could pivot the scraper blade to service worn cutting tools on the
`milling drum. Id.
`Examples of prior art scraper blades are discussed in the ’340 patent.
`See Ex. 1001, 1:8–30. These prior art scraper blades include blades with an
`
`11
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`adjustable height relative to the milling drum (id. at 1:8–16); a “single-part”
`scraper blade “capable of swiveling” (id. at 1:17–22); and using a “lifting
`cylinder for the swivelling movement” (id. at 1:23–26).
`The stated objective of the “invention” disclosed in the ’340 patent is
`to create a scraper blade “which is capable of swivelling with a large
`swivelling angle at a small swivelling radius, which realizes a low design
`height and does not require manual operation.” Id. at 1:51–55.
`The disclosed scraper device includes two-part scraper blade 10. Id.
`Lower part 12 of scraper blade 10 is intended to glide over ground surface 9
`during the milling operation. Id. at 4:45–48. Upper part 14 of scraper blade
`10 is designed to allow it to swivel about “swivelling axis” 18 (id. at 5:13),
`which is parallel to the axis of the milling drum 5. Figure 4 shows upper
`part 14 in its raised and swivelled position.
`In its lowered, operating position, shown in Figure 2, the scraper blade
`glides along the ground behind the drum, preventing milled material from
`being deposited behind the machine and redirecting it toward the conveyor.
`Prelim. Resp. 6 (citing, e.g., Ex. 1001, 1:12–14). For inspection or servicing
`milling drum 6, lower part 12 can be raised vertically, parallel to upper part
`14, by lifting device 22, and then the entire scraper blade 10 can be
`swivelled about swivelling axis 18 by swivelling device 30, as shown in
`Figure 4. Ex. 1001, 5:7–16. Sliding blocks 24 lock the scraper blade in the
`operating position. Id. at 5:43–44.
`
`12
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`
`Representative Claim
`D.
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`reproduced below:
`1. A construction machine, comprising:
`a machine frame;
`a milling drum mounted to rotate about a milling drum
`axis, the milling drum axis being fixed relative to the machine
`frame;
`a scraper blade located behind the milling drum with
`reference to a direction of travel of the construction machine, the
`scraper blade including an upper part and a lower part, the lower
`part being movable in a sliding non-pivotal motion relative to the
`upper part;
`a lifting actuator connected between the upper and lower
`parts to slide the lower part relative to the upper part between a
`downward extended position and an upward retracted position;
`and
`
`a swiveling actuator separate from the lifting actuator, the
`swiveling actuator being connected between the upper part of the
`scraper blade and a fixed part fixed relative to the machine frame,
`the swiveling actuator being configured to extend to pivot the
`scraper blade upward about a swiveling axis parallel to and
`spaced apart from the milling drum axis.
`Ex. 1001, 6:47–67.
`Independent claim 9 also is directed to a construction machine. Claim
`9 differs from claim 1 in that:
`1. Claim 9 does not recite that the lower part of the scraper blade is
`“movable in a sliding non-pivotal motion relative to the upper part,” which
`is recited in claim 1 (see id. at 6:55–56);
`2. Claim 9 recites that the swivelling actuator is “configured to pivot”
`the scrapper blade (id. at 7:42) whereas claim 1 recites that the swivelling
`
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`actuator is “configured to extend to pivot” the scraper blade (id. at 6:65)
`(emphasis added); and
`3. Claim 9 contains a “wherein clause” reciting limitations regarding
`the swivelling actuator, the swivelling axis, and the pivot axis (id. at 8:1–10)
`that are not included in claim 1.
`II. MOTION TO EXCLUDE
`Before addressing the merits of the Petition we first decide Patent
`Owner’s Motion to Exclude to determine the evidence that we may consider.
`Patent Owner moves to exclude five exhibits in their entirety, and
`portions of a sixth exhibit. With few exceptions, the Federal Rules of
`Evidence apply to inter partes proceedings. 37 CFR § 42.62. Patent Owner,
`as the moving party, has the burden of proof to establish that it is entitled to
`the requested relief. 37 C.F.R. § 42.20(c).
`The five exhibits Patent Owner seeks to exclude in their entirety are:
`1. The PM200 Manual (Ex. 1103) (Mot. Excl. 1–3);
`2. Excerpts from Caterpillar’s Parts, Service, and Operation
`Maintenance manuals (Ex. 1137) (Mot. Excl. 3–4);
`3. Excerpts discussing “Designing with Cylinders” from Parker
`Hannifin Corporation, Mobile Cylinder Division (Ex. 1143) (Mot. Excl. 4–
`6);
`
`4. Excerpts from a publication a Milwaukee Cylinder Design
`Engineering Guide (Ex. 1144) (Mot. Excl. 6–8); and
`5. A “Mobile Cylinders Product Information, Quick Reference Data,
`& Application Guide” from Parker Hannifin Corporation, Mobile Cylinder
`Division (Ex. 1150) (Mot. Excl. 4–6).
`
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`
`Patent Owner also seeks to exclude excerpts from the deposition
`testimony of Dr. John Meyer, Ph.D. concerning Exhibits 1143, 1144, and
`1150. Mot. Excl. 8–9.
`Our general approach for considering challenges to the admissibility
`of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., IPR2013-
`00053, slip op. at 19 (PTAB May 1, 2014) (Paper 66). As stated in Corning,
`similar to a district court in a bench trial, the Board, sitting as a non-jury
`tribunal with administrative expertise, is well-positioned to determine and
`assign appropriate weight to evidence presented. Id. (citing Donnelly
`Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (stating, in the
`context of reviewing an administrative determination of the National Labor
`Relations Board based on findings by a Trial Examiner, “We think that
`experience has demonstrated that in a trial or hearing where no jury is
`present, more time is ordinarily lost in listening to arguments as to the
`admissibility of evidence and in considering offers of proof than would be
`consumed in taking the evidence proffered . . . One who is capable of ruling
`accurately upon the admissibility of evidence is equally capable of sifting it
`accurately after it has been received . . . .”)).
`Moreover, “there is a strong public policy for making all information
`filed in an administrative proceeding available to the public.” Liberty Mut.
`Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, slip op. at 40
`(PTAB Feb. 24, 2014) (Paper 59). Rather than excluding evidence that is
`allegedly hearsay, confusing, misleading, untimely, and/or irrelevant, we
`will simply not rely on it or give it little or no probative weight, as
`appropriate, in our analysis. “In an inter partes review, we regard it as the
`better course to have a complete record of the evidence to facilitate public
`
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`access, as well as appellate review.” Sony Computer Entm’t Am. LLC v.
`Game Controller Tech. LLC, IPR2013-00634, slip op. at 31 (PTAB Apr. 14,
`2015) (Paper 32); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found.,
`IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64)
`(citing Donnelly, 123 F.2d at 224 (“If the record on review contains not only
`all evidence which was clearly admissible, but also all evidence of doubtful
`admissibility, the court which is called upon to review the case can usually
`make an end of it, whereas if evidence was excluded which that court
`regards as having been admissible, a new trial or rehearing cannot be
`avoided.”)).
`
`The PM200 Manual (Ex. 1103)
`A.
`The PM200 Manual is a 200-page operations and maintenance manual
`that discloses safety information, operating instructions, and maintenance
`information for a model PM200 Cold Planer road construction machine
`made and sold by Petitioner Caterpillar. Ex. 1103 (see, e.g., id. at 3 (“Table
`of Contents”) and id. at 194–197 (“Index”)).
`Patent Owner states that it “timely objected to Exhibit 1103 on June 6,
`2018 under Fed. R. Evid. 802 as inadmissible hearsay and Fed. R. Evid. 901
`as lacking proper authentication.” Mot. Excl. 1 (citing Paper 12, 1).
`Patent Owner also asserts in its Motion to Exclude that the PM200
`Manual it is not “a prior art printed publication.” Id. at 1; see also PO Resp.
`4245 (arguing that the PM200 Manual is not a prior art printed publication).
`Here, we distinguish between the date printed on the PM200 Manual and the
`substantive disclosure of the PM200 Manual. The date of an asserted
`printed publication may be hearsay if it is submitted for the truth of the
`asserted date. The substance of a printed publication generally is not
`
`16
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`
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`hearsay. See Biomarin Pharm. Inc., v. Genzyme Therapeutic Products Ltd.
`P’ship, IPR2013-00537, slip op. at 25 (P.T.A.B. Feb. 23, 2015) (Paper No.
`79) (denying a motion to exclude a reference as hearsay because the
`reference “is offered as evidence of what it describes to an ordinary artisan,
`not for proving the truth of the matters addressed in the document”)
`Thus, in this Motion to Exclude the PM200 Manual, Patent Owner
`improperly conflates two related but distinct issues – whether the date of the
`PM200 Manual is “hearsay” under the rules of evidence, and whether the
`PM200 Manual is a “printed publication” under 35 U.S.C. § 102. Status as a
`prior art printed publication is a substantive issue, not an evidentiary issue.
`Because Patent Owner has raised the substantive “printed publication”
`issue in its Motion to Exclude, we will address its argument in this section of
`our Decision. In doing so, however, we emphasize that it is Petitioner’s
`burden to demonstrate that a reference is a printed publication by a
`preponderance of the evidence. 35 U.S.C. § 316(e); In re Magnum Oil Tools
`Int'l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partes review,
`the burden of persuasion is on the petitioner to prove ‘unpatentability by a
`preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never
`shifts to the patentee.”) (citing Dynamic Drinkware, 800 F.3d 1375, 1378
`(fed. Cir. 2015); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.”).
`
`1. Hearsay and Authentication
`Patent Owner asserts in its Motion that the PM200 Manual is
`inadmissible under Fed. R. Evid. 802 as hearsay and Fed. R. Evid. 901 as
`
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`lacking proper authentication. Mot. Excl. 1 (citing Paper 12, 1). Patent
`Owner makes this general assertion but offers no persuasive argument or
`evidence that the PM200 Manual is inadmissible under the Rules of
`Evidence. See Resp. Mot. Excl. 1–3 (Petitioner’s Response to the
`evidentiary grounds in the Motion to exclude). The entirety of Patent
`Owner’s argument for this exhibit in its Motion to Exclude is that it is not a
`printed publication. Id. at 1–3.
`Patent Owner’s Reply to the Motion to Exclude is more focused on
`evidentiary issues. It states that testimony of Michael Netka (Ex. 1112) fails
`to authenticate the PM200 Manual. Reply Mot. Excl. 1–2. As explained
`below in our discussion of Mr. Netka’s testimony in the context of the
`“printed publication” issue, we are persuaded that the evidence before us is
`sufficient to support a finding that the PM200 Manual is what the proponent
`claims it is. Accordingly, we deny the motion based on authenticity.
`Patent Owner’s Reply to the Motion to Exclude makes reference to
`“Mr. Netka’s second declaration.” Reply Mot. Excl. 2 (citing “Ex. 1140,
`¶¶ 1–2”). Exhibit 1140, was not filed, is not evidence in this proceeding,
`and thus we do not consider it. 37 C.F.R. § 42.63(a) (“All evidence must be
`filed in the form of an exhibit”) (emphasis added); see also Tr. 21:12–22:8;
`42:18–43:10 explaining why, and confirming that, Exhibit 1140 was not
`filed).
`Regarding its hearsay objection to the PM200 Manual, Patent Owner
`argues in its Reply to the Motion to Exclude that “[t]he March 2007 date
`printed on the face of Exhibit 1103 bears the classic hallmarks of an
`inadmissible hearsay statement under Rule 802.” Our analysis below of the
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`printed publication status of the PM 200 reference looks at the totality of the
`evidence, not just the printed date.
`Based on Mr. Netka’s Declaration, as discussed below, and Patent
`Owner’s admissions that the PM200 machine and photographs of the PM200
`machine are prior art, we determine that Patent Owner has not met its burden
`to prove that the PM200 Manual is admissible hearsay or not authenticated.
`Accordingly, we deny the Motion to Exclude the PM200 reference on
`evidentiary grounds.
`Because Patent Owner has raised the “printed publication” issue in its
`Motion to Exclude, albeit improperly, we now turn to the separate and
`distinct issue of whether the PM200 Manual is a printed publication, on
`which Petitioner has the burden of proof, as explained above. We also note
`that Petitioner responded to the “printed publication” issue in its Response to
`the Motion to Exclude. Resp. Mot. Excl. 3–5.
`2. Printed Publication
`Under 35 U.S.C. § 102, a person is entitled to a patent unless the
`invention was “patented or described in a printed publication in this or a
`foreign country” either “before the invention” by the patent applicant, or
`“more than one year prior to the date of the application for patent in the
`United States.” 35 U.S.C. §§ 102(a), (b). Whether a document qualifies as a
`printed publication under § 102 is a legal conclusion based on underlying
`factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed.
`Cir. 2018) (citation omitted); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511
`F.3d 1186, 1192 (Fed. Cir. 2008) (citation omitted). “Public accessibility”
`has been called the touchstone in determining whether a reference
`constitutes a printed publication bar under 35 U.S.C. § 102. SRI, at 1194.
`
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`
`A reference is publicly accessible upon a satisfactory showing that it
`has been disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, can locate it. Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v.
`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)); see also In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (“The statutory phrase
`‘printed publication’ has been interpreted to mean that before the critical
`date the reference must have been sufficiently accessible to the public
`interested in the art; dissemination and public accessibility are the keys to
`the legal determination whether a prior art reference was ‘published.’”)
`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568
`(Fed. Cir. 1988)). See also GoPro, Inc. v. Contour IP Holding LLC, 908
`F.3d 690, 693 (Fed. Cir. 2018) (explaining that accessibility goes to the issue
`of “whether interested members of the relevant public could obtain the
`information if they wanted to” (emphases added; citations omitted). “If
`accessibility is proved, there is no requirement to show that particular
`members of the public actually received the information.” Constant, 848
`F.2d at 1569.
`Petitioner bears the burden of establishing that a particular document
`is a printed publication. Medtronic, 891 F.3d at 1380 (citing Blue Calypso,
`815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of
`proving p
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