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`EXHIBIT 49
`EXHIBIT 49
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`EXHIBIT 49
`EXHIBIT 49
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`Trials@uspto.gov
` Paper 10
`571-272-7822
` Entered: May 1, 2019
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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 IPR2017-02186
`Patent 9,624,628 B2
`____________
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
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`I.
`
`INTRODUCTION
`
`A. Background
`Caterpillar, Inc. (“Petitioner”) filed a Petition to institute an inter
`partes review of claims 1, 2, 5, 6, 9–22, and 27–29 of U.S. Patent No.
`9,624,628 B2 (“the ’628 patent”). Paper 1 (“Pet.”). Wirtgen America Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We instituted an inter partes review of all the challenged claims in the ’628
`patent on all of the grounds asserted by Petitioner. Paper 7 (“Dec. Inst.”).
`Patent Owner did not file a Patent Owner Response and the parties did not
`request oral argument.
`We cautioned Patent Owner in our Scheduling Order that “any
`arguments for patentability not raised in the Response will be deemed
`waived.” Paper 8, 7. To the extent Patent Owner raised arguments in the
`Preliminary Response that we do not address here, those arguments are
`waived. Because Patent Owner raised certain issues relevant to claim
`construction and obviousness in its Preliminary Response that we find
`helpful as part of our independent assessment of whether Petitioner has met
`its burden—to show by a preponderance of the evidence why the challenged
`claims are unpatentable, we do address, as part of our analyses, certain
`Patent Owner arguments pertinent to Petitioner’s burden. That burden of
`persuasion remains with Petitioner, and never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (discussing the burdens in our administrative review
`process).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
`arguments of the parties and the supporting evidence, we find that Petitioner
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`2
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`has demonstrated by a preponderance of the evidence that each of
`challenged claims—i.e., claims 1, 2, 5, 6, 9, 10, 12–16, 18–22, and 27–29 of
`the ’628 patent—is unpatentable. Petitioner has not demonstrated that
`claims 11 and 17 are unpatentable.
`B. Additional Proceedings
`The parties indicated that the ’628 patent is being asserted by Patent
`Owner against Petitioner in several other proceedings, namely, Wirtgen
`America, Inc. v. Caterpillar Prodotti Stradali S.r.L. et al., Civ. No. 0:17-cv-
`02085, in the United States District Court for the District of Minnesota.
`Petitioner indicated, prior to entry of our Decision on Institution, that this
`lawsuit was stayed pending resolution of ITC Investigation No. 337-TA-
`1067, entitled “Certain Road Milling Machines and Components Thereof”
`(USITC, filed July 19, 2017), and also in Wirtgen America, Inc. v.
`Caterpillar, Inc., Civ. No. 1:17-cv-00770 in the United States District Court
`for the District of Delaware. 1 Pet. 86–87, Paper 4, 2–3.
`Petitioner has also challenged the same claims in the ’628 patent that
`we address in this proceeding in IPR2018-00155.
`C. The ’628 Patent
`The ’628 patent (Ex. 1001), titled “Auxiliary Drive,” describes a
`roadway construction machine such as a cold milling machine having a
`milling drum for scarifying a road surface. Ex. 1001, 1:26–39. The milling
`
`
`1 Just prior to the Board’s institution in this proceeding, the Administrative
`Law Judge granted Patent Owner’s motion to terminate the ITC
`investigation as to the ’628 patent. See Certain Road Milling Machines and
`Components Thereof, Inv. No. 337-TA-1067, USITC (March 27, 2018)
`(Order No. 30) (Granting motion to terminate investigation as to ’628
`patent.).
`
`3
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`drum is equipped with exchangeable tools on its outer surface, and these
`tools need to be replaced from time-to-time due to wear and breakage. Id. at
`1:39–44. Annotated Figure 2 of the ’628 patent is reproduced below.
`
`
`Figure 2 of the ’628 patent, above, depicts basic drive line components of a
`construction machine including main drive motor 6 (highlighted yellow)
`powering work drum 8 via belt drive 16, as well as auxiliary drives 20’ and
`20’’ (highlighted green), and reduction gear 25 for milling a road surface.
`Exchangeable tools 14, for engaging a road surface, are shown on the
`external surface of drum 8. Id. at 5:23–35. Auxiliary drives 20’ and 20’’
`illustrate alternative embodiments, essentially showing that an auxiliary
`drive may be positioned in various locations along the drive line. Id.
`The ’628 patent describes that during or after milling operations tools
`14 may have to be replaced. Id. Upon raising drum 8 away from the ground
`surface, an auxiliary drive 20 (shown alternatively in Figure 2 as 20’ and
`
`4
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`20’’), “can be coupled to the drive line to rotate the work roller in its raised
`condition by a predetermined or selectable rotational angle.” Id. at 2:5–7.
`The auxiliary drive provides torque delivering a more accurate and safe
`rotation of the drum during maintenance as compared to drive motor 6, in
`order to “rotate the work roller by a small rotational angle to bring not yet
`exchanged tools into a more convenient mounting position.” Id. at 2:11–13.
`Rotating the drum by the auxiliary drive is also done for efficiency, safety
`reasons, and accident prevention. Id. at 1:59–61. The ’628 patent also
`explains that for such maintenance procedures “the drive motor for the work
`roller is out of operation or decoupled.” Id. at 2:19–20.
`D. Illustrative Claim
`Of the challenged claims, claims 1, 15, and 21 are independent. Each
`of dependent claims 2, 5, 6, and 9–14 depends directly from claim 1, claims
`16–20 depend directly from claim 15, and claims 22 and 27–29 depend
`directly from claim 21. Claim 1 illustrates the claimed subject matter and is
`reproduced below:
`1. A construction machine for the treatment of ground surfaces,
`comprising:
`a machine frame;
`a work drum supported from the machine frame and including
`exchangeable tools fastened to the work drum;
`a drive line including a work motor and a transmission
`connecting
`the work motor to the work drum, the
`transmission including:
`a belt drive including a motor-side pulley, a drum-side pulley,
`and at least one drive belt connecting the motor-side pulley to
`the drum-side pulley; and
`
`5
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`a reduction gear arranged internally of the work drum and
`connected to the drum-side pulley; and
`an auxiliary drive mounted at a location on the construction
`machine and including an auxiliary drive motor, the auxiliary
`drive having a first configuration in which the auxiliary drive
`motor is coupled to the work drum via at least a portion of the
`transmission to rotate the work drum, the auxiliary drive
`having a second configuration in which the auxiliary drive
`remains mounted at the location on the construction machine
`and the work drum can be rotated by the work motor.
`Ex. 1001, 6:6–28 (emphases added). Independent claim 15 is a similar
`apparatus claim and includes the further limitations of “a drive coupling”
`and “a pump distributor drive.” Id. at 7:21–53. Independent claim 21 is a
`method claim, and instead of the auxiliary drive having a first and a second
`“configuration,” recites the work drum having “a first rotational speed,” and
`“a second rotational speed less than the first rotational speed.” Id. at 8:7–32.
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds. 2
`References
`Haehn3 and Smith4
`
`Basis Claim(s) Challenged
`§ 103 1, 2, 9, 10, 13, 21, 22, 27,
`and 29
`§ 103 5
`§ 103 6, 15, 19, and 20
`
`Haehn, Smith, and Jakob5
`Haehn, Smith, Jakob, and
`Godbersen6
`
`2 Petitioner supports its challenge with the opinion testimony of Lee A.
`Horton, P.E. (Ex. 1010). See infra.
`3 Ex. 1003, U.S. Patent No. 5,893,677 (Apr. 13, 1999).
`4 Ex. 1004, GB 2060794 B, App’l. No. 8032569 (Pub. May 7, 1981).
`5 Ex. 1005, U.S. Patent No. 4,193,636 (Mar. 18, 1980).
`6 Ex. 1006, U.S. Patent No. 4,343,513 (Aug. 10, 1982).
`
`6
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`Basis Claim(s) Challenged
`§ 103 11
`§ 103 12, 28
`§ 103 17
`
`References
`Haehn, Smith, and Stroh7
`Haehn, Smith, Lent8, and Schubert9
`Haehn, Smith, Jakob, Godbersen,
`and Stroh
`Haehn, Smith, Jakob, Godbersen,
`and Stroh10
`
`F. The Level of Ordinary Skill in the Art
`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
`(6) educational level of workers active in the field.” Envtl. 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. Ltd,
`Inc. 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 v. Bourdeau, 261
`
`§ 103 14, 16, and 18
`
`
`7 Ex. 1007, U.S. Patent No. 4,663,919 (May 12, 1987).
`8 Ex. 1008, U.S. Patent No. 4,929,121 (May 29, 1990).
`9 Ex. 1009, U.S. Patent No. 6,112,139 (Aug. 29, 2000).
`10 As we explain in the relevant analysis at Section III.H., a more appropriate
`reference description for this ground is, Haehn, Smith, Jakob, Godbersen,
`and Stroh, or Haehn, Smith, Lent, and Schubert.
`
`7
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`F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, the Supreme Court informs
`us that “[a] person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`Petitioner asserts that “a person of ordinary skill in the art for the ’628
`patent would have had 1) a bachelor’s degree in mechanical engineering or
`an equivalent degree, and two to five years of experience working on mobile
`construction machine design, or 2) seven to ten years of experience working
`on mobile construction machine design.” Pet. 12 (citing Ex. 1010 ¶ 18).
`Patent Owner does not expressly disagree with Petitioner’s position or
`substantively address the level of ordinary skill in the art in its Preliminary
`Response.
`As we noted in our Decision on Institution, neither party provides a
`detailed analysis addressing the factors described above. However, the prior
`art reflects certain technical knowledge and a background in mechanical
`engineering and design of mobile road-building equipment systems,
`including cold-milling equipment, power transmission systems, mechanical
`drive systems, electronics and/or hydraulic control systems for agriculture
`and construction work vehicles. See e.g., Ex. 1001, 1:26–62; Ex. 1003,
`1:4–41; Ex. 1004, 1–2; Ex. 1009, 1:16–19. Similar to our Decision on
`Institution, and in accordance with the prior art and the obviousness
`challenges presented by Petitioner, we determine that the level of ordinary
`skill in the art includes a person having a bachelor’s degree in mechanical
`engineering or an equivalent degree, and two to five years of experience
`working on mobile construction and agricultural machine design, or an
`equivalent balance of education and work experience in design and
`construction of mobile construction and agricultural machines.
`
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`II. CLAIM CONSTRUCTION
`A. Legal Standard
`In this inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard). 11
`Claim terms are given their ordinary and customary meaning as would
`be 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. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007), see also Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996 (“Although words in
`a claim are generally given their ordinary and customary meaning, a
`patentee may choose to be his own lexicographer and use terms in a manner
`other than their ordinary meaning, as long as the special definition of the
`term is clearly stated in the patent specification or file history.”). We apply
`this standard to the claims of the ’628 patent.
`B. Auxiliary Drive
`Petitioner asserts that no claim construction of any term is required.
`Pet. 13. Patent Owner, on the other hand, contends in its Preliminary
`Response that “auxiliary drive,” as recited for example in claim 1, “must be
`
`11 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change,
`however, applies to petitions filed on or after November 13, 2018, and
`therefore does not apply to this proceeding. Id.
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`independently powered,” i.e., “not powered by the main engine.” Prelim.
`Resp. 6.
`In our Decision on Institution, we explained that this proposed
`construction is directed really to how the auxiliary drive is powered, rather
`than what it is. Dec. on Inst. 8. Patent Owner points out that the plain and
`ordinary meaning of “auxiliary” is “used as a substitute or reserve in case of
`need.” Prelim. Resp. 7 (citing Ex. 2007). Patent Owner argues, however,
`that this definition does not give a full and accurate meaning in light of the
`specification of the ’628 patent. Id. In support of its claim construction,
`Patent Owner relies up an explanation in the Specification allegedly
`describing inoperability of the main drive motor when the auxiliary drive is
`employed, i.e., when the auxiliary motor is operating “the drive motor for
`the work roller is out of operation or decoupled.” Id. (citing Ex. 1001,
`2:19–20) (emphases added).
`We are not persuaded on the full record now before us in this
`proceeding that the claims require that the claimed “auxiliary drive” must be
`“independently powered.” Nowhere in the specification or claims does
`Patent Owner show that the term “independently powered” describes the
`auxiliary drive. Patent Owner does not point to, nor can we find in the
`specification any evidence or explanation of an express control, or power,
`relationship (or the lack thereof) between the drive motor and auxiliary
`motor. To the extent Patent Owner refers to Caterpillar’s use of
`“independent unit” to describe the auxiliary drive in EP2322718, this
`description appears to relate to the mechanical coupling of the auxiliary
`drive unit to the drive train and work drum transmission, not how the
`auxiliary unit is powered. Prelim. Resp. 11–12 (citing Ex. 2010, [0004]-
`
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`[0005]). EP2322718 describes, for example that “[a]s an independent unit,
`the auxiliary drive must be coupled to the drive train . . . [i]nsufficient
`coupling of the auxiliary motor to the drive train can result in unwanted
`slippage which leads to unpredictable rotation of the work drum.” Ex. 2010,
`[0005]. In other words, we cannot discern from either Patent Owner’s
`explanation or EP2322718 that the auxiliary drive is truly “independent” and
`therefore, “not powered,” by the main engine.
`We also find no specific disavowal in the Specification of the ’628
`patent that the drive motor cannot power the auxiliary drive. The ’628
`patent explains that the auxiliary drive “preferably” can be an electric,
`hydraulic, or pneumatic motor. See Ex. 1001, 3:29–35, 5:35–48. Indeed,
`even if we assume an embodiment where the drive motor “is out of
`operation” and not powering the auxiliary drive, the phrase in the written
`description relied upon by Patent Owner states also an alternative, where the
`drive motor is simply “decoupled” from the transmission. It is entirely
`understandable to a person of ordinary skill in the art that an electrically
`powered auxiliary motor, or a hydraulic or pneumatic operated auxiliary
`motor, is still driven, indirectly, via an alternator/generator or a pump
`powered by the drive motor, even if, mechanically speaking, the drive motor
`is decoupled and not influencing the drive line. See Ex. 1001, 3:29–35,
`5:35–48, 4:14–18, see also Ex. 1010 ¶ 18.
`In the proposed construction, Patent Owner’s implicit interpretation of
`“decoupled” in the written description, assumes a complete separation, e.g.,
`total mechanical, hydraulic, and electrical, etc., separation, of the main drive
`motor from both the work drum and the auxiliary motor. See Prelim.
`Resp. 7–8 (“Because the drive motor is out of operation or decoupled when
`
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`the auxiliary drive is rotating the work roller the claimed auxiliary drive
`must be independently powered.”). The Specification however, read in
`context, uses the term “coupled” and “decoupled” to describe the mechanical
`transmission connection between the auxiliary drive and the work drum, not
`necessarily, if at all, a power connection between the drive motor and the
`auxiliary motor. See Ex. 1001 2:6–11 (“[A]n auxiliary drive can be coupled
`to the drive line to rotate the work roller.”). Indeed, the related paragraphs
`and technical discussion relating to the sentence referred to by Patent Owner
`to support this position are reasonably understood as directed to the
`mechanical drive line transmission between the drive motor, auxiliary motor
`and the work roller. See id. at 2:4–65 (The ’628 patent describes for
`example “that the motor-side pulley of the belt drive can be decoupled from
`the drive motor by means of a coupling unit.”).
`We appreciate that it is an important aspect of the ’628 patent to rotate
`the work drum by use of the auxiliary motor for safety reasons and to more
`accurately control rotation for tool replacement procedures. Id. at 1:59–62.
`What we do not find anywhere in the specification or claims is persuasive
`evidence supporting the assertion that the auxiliary drive is limited to being
`“independent” of and “not powered by the main engine,” as Patent Owner
`proposes. For instance, the ’628 patent states that an electric auxiliary drive
`“can be powered by a generator.” Id. at 5:37. However, something has to
`power, e.g., provide mechanical rotation to, the generator to produce
`electricity. A person of ordinary skill in the art would have understood that
`the main drive motor, even decoupled from the work drum transmission, is
`one option for powering the generator.
`
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`On the complete record now before us, and under the broadest
`reasonable interpretation, we are persuaded, as we were in Institution
`Decision, that “auxiliary drive” should be construed in accordance with its
`plain and ordinary meaning, that is—as an alternative or substitute drive that
`is used when needed. See Dec. on Inst. 11.
`C. Other Constructions
`Patent Owner asserts also that Petitioner’s construction of “coupled”
`in the ITC proceeding is in conflict with its challenges in this proceeding.
`See Prelim. Resp. 43–46. Patent Owner, however, advances no claim
`construction of its own for this claim term. See id. In addition, our rules do
`not require positions consistent with related cases in different fora. Our
`rules require that the parties identify related matters. 37 C.F.R. § 42.8(b)(2).
`Various reasons may justify inconsistencies among fora, including differing
`legal or evidentiary standards, a change in litigation strategy, or a change in
`position.
`The claims, for example claim 1, and the written description of the
`’628 patent use the term “coupled” in a consistent manner and with no
`apparent special meaning attached to it. Claim 1 recites, “a first
`configuration in which the auxiliary drive motor is coupled to the work
`drum.” Ex. 1001, 6:22–23 (emphasis added). The ’628 patent explains that
`“[d]rive line 18 comprises at least one drive motor 6 as well as a belt drive
`16 coupled to drive motor 6.” Id. at 4:8–10. As we explained in our
`Institution Decision, an ordinary meaning of “couple[d]” is “something that
`joins or links two things together.” MERRIAM-WEBSTER ONLINE
`DICTIONARY, https://www.merriam-webster.com/dictionary/coupled, (last
`visited April 17, 2019); see also Dec. on Inst. 11–12. We determine that
`
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`“coupled” should be accorded its plain and ordinary meaning that includes,
`“joining or linking two things together.”
`III. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability and
`Patent Owner’s arguments in its Preliminary Response to determine whether
`Petitioner has met its burden under 35 U.S.C. § 316(e).
`A. The Legal Constructs of Obviousness
`Section 103(a) 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. 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.” Graham, 383 U.S. at 18.
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`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.
`Id. at 417. To reach 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.
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`§ 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham,
`is but an aid in reaching the ultimate determination of whether the claimed
`invention as a whole would have been obvious.”) (citation omitted).
`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
`
`15
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`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`“recourse to common sense” or to that which the prior art teaches. Id.
`Against this general background, we consider the references, other
`evidence, and arguments on which the parties rely.
`B. Claims 1, 2, 9, 10, 13, 21, 22, 27, and 29— Alleged obviousness
`over Haehn and Smith
`Petitioner asserts that claims 1, 2, 9, 10, 13, 21, 22, 27, and 29 would
`have been obvious over Haehn and Smith. Pet. 28–53. Petitioner has
`established by a preponderance of the evidence that claims 1, 2, 9, 10, 13,
`21, 22, 27, and 29 would have been obvious for the reasons explained below.
`1. Haehn
`Haehn discloses “an automotive working machine for the treatment of
`roadways.” Ex. 1003 1:4–5. The road working machine includes frame 1
`supporting working drum 8 and internal combustion engine 9 provides
`power to rotate the working drum via belt drive 10 as shown below in
`Figures 2 and 4 of Haehn.
`
`
`16
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`Haehn’s Figure 2 illustrates a partial side-view of a road working machine
`and certain belt-drive power transmission components.
`
`
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`17
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`Figure 4 of Haehn, above, is a cut-away view of working drum 8 showing
`reduction gear 11. Belt drive 10 drives reduction gear 11 within working
`drum 8. Haehn explains further that the working drum is provided with
`cutting tools and that “the connection between the cutting tools and the
`working drum is accomplished by a tool holder fixedly arranged on the
`working drum.” Id. at 5:39–42.
`2. Smith
`Smith discloses a mining machine including a rotary cutting disc
`“provided with a plurality of picks each releasably located in, and projecting
`from, a pick box, a plurality of which boxes are welded to the cutting disc at
`various locations.” Ex. 1004, 1. 12 Smith explains that these picks often
`need to be replaced, and that during such replacement operations, “a
`secondary, hydraulic motor [is] operable to rotate the cutting disc at slow
`speed when mineral cutting operations are not being effected.” Id. at 2.
`Smith illustrates, in annotated Figures 4 and 5 below, an embodiment
`of a transmission having alternative drive lines shown highlighted in yellow.
`
`
`12 We reference what appears to be the original page numbers (sometimes
`hand-written) at the top of each page of Smith’s written description.
`
`18
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`
`
`Figure 4 of Smith, above, depicts one embodiment of a transmission with
`primary drive line 30 highlighted in yellow, a main motor unit (not shown)
`driving input shaft 19 which, via clutch 28, drives pinion 27 on output shaft
`20 to turn the rotary cutting disc during mineral cutting operations. Id. at 11.
`
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`19
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`Smith’s annotated Figure 5, above, depicts a secondary drive line of the
`transmission with main motor unit (not shown) driving input shaft 19, and
`with clutch 28 not engaged with either pinion 26 or 27, so that input shaft 19
`drives, directly, only hydraulic pump 23. Id. at 11–12. Pump 23 drives
`hydraulic motor 31 via hydraulic line 30A in a “slow drive condition.” Id. at
`11. Smith explains that the primary drive line in Figure 4 is for cutting
`operations, whereas the secondary drive line illustrated in Figure 5, “[t]his
`slow drive condition is employed for pick inspection/replacement.” Id. at
`11–12.
`
`3. Claim 1
`Petitioner contends that Haehn discloses a roadway construction
`machine for treating ground surfaces including “machine frame 1,”
`supporting “work drum 8” having “exchange holders 16” for receiving
`“cutting tools 17.” Pet. 30–32 (citing Ex. 1003, 1:6–10, 5:66–6:2, 6:24–33,
`46–51, 7:30–36; Ex. 1010 ¶¶81–82, 84–86). Petitioner points to Haehn’s
`Figure 2, reproduced below with Petitioner’s annotations, as disclosing “a
`drive line including [ ] and a transmission connecting the work motor to the
`work drum” as recited for in claim 1. Id. at 33–34.
`
`20
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`
`
`Figure 2 of Haehn as annotated by Petitioner, above, illustrates a portion of a
`roadway machine including working drum 8, engine 9 and belt drive
`transmission 10. According to Petitioner, Haehn disclose engine 9 driving
`belt drive transmission 10 for rotating, via reduction gear 11, the working
`drum 8. Id. at 34 (citing Ex. 1003, Fig. 4).
`As for the differences between the prior art and claim 1, Petitioner
`concedes that Haehn does not disclose “an auxiliary drive for rotating the
`drum during tool exchange procedures.” Pet. 37. Petitioner turns to Smith
`to address this requirement.
`Petitioner argues that Smith, a ground cutting machine for mining
`operations, rather than cutting roadways, includes similar components
`including cutting disc 9 having “‘a plurality of picks each releasably loc
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