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`Trials@uspto.gov
` Paper 49
`571-272-7822 Entered: November 27, 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.
`____________
`
`IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
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`
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
`determine that Caterpillar Inc. (“Petitioner”) has shown, by a preponderance
`of the evidence, that claims 1, 3, 6–8, 10, 11, 13, 16, 17, 19, 20, 22, 24, 26,
`and 27 of U.S. Patent No. 8,308,395 B2 (Ex. 1001, “the ’395 patent”) are
`unpatentable, and that Petitioner has not shown that claims 5 and 15 of the
`’395 patent are unpatentable. We also (1) deny the Wirtgen America, Inc.’s
`(“Patent Owner’s”) contingent Motion to Amend; (2) deny Patent Owner’s
`Motion to Exclude; and (3) grant Petitioner’s two Motions to Seal.
`
`I. BACKGROUND
`
`A. Procedural History
`Petitioner requested inter partes review of the challenged claims on
`May 24, 2018. Paper 2 (“Pet.”), 1. Petitioner provided a Declaration of
`Dr. David M. Bevly in support of its positions. Ex. 1002 (“Bevly
`Declaration”). Patent Owner filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). Based on our review of these submissions, we instituted a
`trial on all of the claims challenged in the Petition, on all of the grounds set
`forth in the Petition. Paper 8 (Dec.). Petitioner contends that claims 1, 3, 5–
`8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27 are unpatentable on the
`following grounds (Pet. 24, 64):
`
`2
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`(1) claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26,
`and 27 as obvious under 35 U.S.C. § 1031 based on Davis 2 and
`Brabec;3 and
`(2) claims 1, 6, 8, 10, 11, 16, 17, 19, 20, 24, 26, and 27 as
`obvious under 35 U.S.C. § 103 based on Davis and Krieg.4
`Patent Owner filed a Patent Owner Response (Paper 17) and
`
`Contingent Motion to Amend (Paper 18, “MTA”), along with a Declaration
`of Dr. Ralph Wilhelm in Support of Patent Owner’s Response and
`Contingent Motion to Amend (Ex. 2004, “Wilhelm Declaration”). Petitioner
`filed a Reply (Paper 22, “Pet. Reply”) and Opposition to Patent Owner’s
`Motion to Amend (Paper 23, “MTA Opp.”). Patent Owner filed a Sur-Reply
`to Petitioner’s Reply (Paper 35, “PO Sur-Reply”) and a Reply to Petitioner’s
`Opposition (Paper 34, “MTA Reply”), and Petitioner filed a Sur-Reply to
`Patent Owner’s Reply related to the Motion to Amend (Paper 41, “MTA
`Sur-Reply”). During trial, Patent Owner filed the Declaration of Jan
`Schmidt (Ex. 2008, “Schmidt Declaration”), and Petitioner filed the
`Declaration of Michael Netka (Ex. 1046, “Netka Declaration”), Declaration
`of Dr. David Bevly in Support of its Opposition to Patent Owner’s Motion to
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’395 patent was
`filed before that date, our citations to Title 35 are to its pre-AIA version.
`2 U.S. Patent Pub. No. 2002/0047301, published April 25, 2002 (Ex. 1004,
`“Davis”).
`3 U.S. Patent Pub. No. 2002/0154948, published October 24, 2002
`(Ex. 1005, “Brabec”).
`4 U.S. Patent No. 6,286,606 B1, issued September 11, 2001 (Ex. 1006,
`“Krieg”).
`
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`Amend (Ex. 1047, “Second Bevly Declaration”), and Declaration of Michael
`Aldrich (Ex. 1052, “Aldrich Declaration”).
`
`Patent Owner filed a Motion to Exclude (Paper 42, “Mot. Exclude”),
`Petitioner filed a Response (Paper 43, “Resp. Mot. Exclude”), and Patent
`Owner filed a Reply to Petitioner’s Response (Paper 45, “Reply Mot.
`Exclude”). Petitioner filed a Motion to Seal (Paper 25, “Pet. Mot. Seal”),
`and Patent Owner filed an Opposition (Paper 36, “PO Opp. Mot. Seal”).
`Petitioner also filed an unopposed Motion to Seal (Paper 32, “Pet. Unopp.
`Mot. Seal”).
`
`An oral hearing was held on August 22, 2019, and a transcript of the
`hearing is included in the record. Paper 48 (“Tr.”).
`
`B. Related Matters
`Petitioner and Patent Owner identify the following proceedings as
`related matters: Wirtgen America, Inc. v. Caterpillar, Inc., No. 1:17-cv-
`00770 (D. Del., filed June 16, 2017); Wirtgen America, Inc. v. Caterpillar
`Prodotti Stradali S.r.L., No. 0:17-cv-02085 (D. Minn., filed June 15, 2017);
`ITC Inv. No. 337-TA-1067 (“Road Milling Machines and Components
`Thereof”) (filed July 19, 2017). Pet. 77–78; Paper 5, 2. Neither party has
`apprised us of any developments in these proceedings that are relevant to the
`issues we address in this Decision. Petitioner also notes that the parties are
`in a pending dispute in Italy related to a foreign counterpart to the ’395
`
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`patent. Pet. 78.5 Patent Owner also identifies the following applications and
`patents that “claim or may claim the benefit of the priority of the filing date”
`of the ’395 patent: U.S. App. No. 13/671,786 (issued as U.S. Patent No.
`8,511,932) and U.S. App. No. 13/934,875 (issued as U.S. Patent No.
`8,690,474). Paper 5, 1.
`
`C. The ’395 Patent
`The ’395 patent describes a road construction machine that treats road
`surfaces with a height-adjustable milling drum. Ex. 1001, Abstract. The
`machine includes a controller that receives values of the milling depth and
`slope via sensors, and adjusts the position of the milling drum to maintain a
`desired depth and/or slope. Id. at 3:62–4:12.
`
`According to the ’395 patent, milling machines with integrated
`levelling devices, sensors, and control systems were “already known” in the
`art. Ex. 1001, 1:11–15. The ’395 patent describes problems encountered
`during “the frequent change between the many different sensors, which is
`necessary for application-related reasons.” Id. at 1:34–36. For example,
`changing sensors typically involves interrupting the milling operation, which
`is necessary to prevent poor work results if the machine and the milling
`drum are not stopped during the sensor change. See id. at 1:36–53. To
`
`
`5 Patent Owner submits a report from an “Italian court-appointed technical
`expert” from that proceeding that interprets the references at issue here. PO
`Resp. 12–14; Ex. 2014. The Italian court has not ruled on the validity of
`Patent Owner’s claims under Italian law. See Tr. 25:22–25. As to the
`report, Patent Owner does not explain how that analysis pursuant to Italian
`patent law impacts the analysis here, if at all, or the weight we can
`reasonably give such a report in this proceeding. PO Resp. 12–14; Ex. 2014.
`Under these circumstances, we give the Italian declaration no weight.
`5
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`avoid these problems, the ’395 patent describes an object of the invention as
`providing a leveling device that allows for the change of sensors “without
`any interruption in the milling operation.” Id. at 1:54–58.
`
`To achieve this goal, the ’395 patent describes a leveling device
`having an indication and setting device for the sensors currently in use, and
`another indication and setting device for an additional sensor not in use that
`will then be exchanged for one of the sensors currently in use. Ex. 1001,
`1:62–67. The system allows for preparing a sensor with actual and set
`values while the operation continues, so that at the time of switchover, the
`sensor can “be changed without any alteration of the currently applicable
`adjustment value.” Id. at 2:1–7.
`
`Figure 2 of the ’395 patent appears below.
`
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`Figure 2 depicts the connection of exchangeable sensors A, B, C to leveling
`device 4 with two controllers 6a, 6c. Ex. 1001, 3:62–66, 4:44–45. Sensors
`A, B, C register the current, actual value of the milling depth and/or slope of
`milling drum 3 relative to the road surface. Id. at 3:66–4:3. Leveling device
`4 includes indication and setting device 2 having three nearly identical
`indication and setting units 2a, 2b, 2c. Id. at 4:13–15, 4:45–47. Indication
`and setting units 2a, 2b, 2c set the operating parameters for sensors A, B, C.
`Id. at 4:15–17. Controllers 6a, 6c automatically control the depth and/or
`slope of the milling drum based on predetermined set values and measured
`
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`actual values, with adjustments made as necessary when the measured value
`departs from the predetermined set value. Id. at 4:6–11, 4:19–23.
`Controllers 6a and 6c remain in automatic mode during switchover to
`sensor B. Id. at 4:19–23. Switchover devices 10a and 10b allow a user to
`switch from sensor A or sensor C to sensor B, depending on which
`switchover device 10a or 10b is selected by the user. Id. at 4:28–34.
`The challenged claims include five independent claims—claims 1, 11,
`20, 26, and 27. Claim 1 is reproduced below:
`1. A road construction machine for the treatment of road
`surfaces, comprising:
`a milling drum, the milling drum being position adjustable with
`regard to at least one position characteristic selected from the
`group consisting of milling depth of the drum and slope of the
`drum; and
`a leveling system configured to control the at least one position
`characteristic, the leveling system including:
`a plurality of selectable sensors, each sensor configured to sense
`a current actual value of an operating parameter
`corresponding to at least one of the milling depth of the drum
`and the slope of the drum;
`a plurality of indication and setting devices, each of the
`indication and setting devices being associatable with at least
`one of the plurality of selectable sensors, each indication and
`setting device being operable to indicate the current actual
`value of and to set a set value for each operating parameter
`sensed by its associated sensor or sensors;
`a controller and switchover system configured to control the at
`least one position characteristic conditioned on set value or
`values and sensed current actual value or values of the
`operating parameter or parameters sensed by a selected subset
`of the plurality of selectable sensors by returning at least one
`adjustment value
`to adjust the at
`least one position
`characteristic so that the sensed current actual value or values
`
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`of the operating parameter or parameters approach the set
`value or values for the selected subset of the plurality of
`selectable sensors; and
`the controller and switchover system being configured to switch
`over from control based upon a first selected subset of the
`plurality of selectable sensors to control based upon a second
`selected subset during milling operation without interruption
`of the milling operation and without any erratic alteration of
`the at least one adjustment value, the second selected subset
`exchanging at least one replacement sensor not in the first
`subset for at least one replaced sensor that was in the first
`subset.
`Ex. 1001, 7:2–41. Claim 11 recites a “leveling system” that includes
`limitations similar to the leveling system recited in claim 1. See id. at 8:35–
`67. Claims 20, 26, and 27 recite methods for controlling a milling drum. See
`id. at 9:52–10:16, 10:40–10:59.
`
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity ... the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
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`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved based on underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations.6 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–
`18 (1966). An obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner,
`however, cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements,” but “must instead articulate specific
`reasoning, based on evidence of record” to support an obviousness
`determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81
`(Fed. Cir. 2016). Petitioner also must articulate a reason why a person of
`ordinary skill in the art would have combined the prior art references. In re
`NuVasive, 842 F.3d 1376, 1382 (Fed. 2016).
`
`
`6 Neither party directs us to evidence of secondary considerations.
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`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). The person of ordinary skill in the art is a
`hypothetical person who is presumed to have known the relevant art at the
`time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995). Factors that may be considered in determining the level of ordinary
`skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. Id. In a given case, one or more factors
`may predominate. Id.
`Petitioner asserts that a person having ordinary skill in the art
`would have been someone having either: (1) a bachelor’s degree
`in mechanical engineering or an equivalent degree and two to
`five years of experience with machine control systems using
`sensors, or (2) seven to ten years of experience with machine
`control systems using sensors.
`Pet. 7 (citing Ex. 1002 ¶¶ 21–23); see also Ex. 1002 ¶ 21 (addressing
`pertinent factors). Patent Owner “does not dispute [Petitioner’s] proposed
`skill level” quoted above, but contends that Petitioner’s perspective “is
`flawed because it fails to apply that level of skill to the appropriate technical
`field (i.e., the art) of the ’395 patent.” PO Resp. 18 (citing Ex. 2004 ¶¶ 22,
`25). Patent Owner contends that the hypothetical person of ordinary skill in
`the art “would have had at least some direct experience with road milling
`machines and milling operations.” Id. (citing Ex. 2004 ¶¶ 26–27).
`We find Petitioner’s proposed level of ordinary skill in the art
`appropriate and we apply that definition here. We do not agree with Patent
`Owner’s argument that a person of ordinary skill in the art must also have
`
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`“direct experience with road milling machines and milling operations.” Id.
`Patent Owner cites to the Wilhelm Declaration for support, but the
`Declaration merely cites to the ’395 patent’s disclosure of the road milling
`art and the testimony of Dr. Bevly that acknowledges that the environment
`that the control system operates in is a consideration when implementing a
`control system for a specific machine. Ex. 2004 ¶¶ 26–28. Neither piece of
`evidence, alone or in combination, establishes that one of ordinary skill in
`the art must have direct experience with milling machines, in addition to the
`education and years of experience in control systems, in order to qualify as
`one of ordinary skill in the art.
`Further, Patent Owner’s proposed “direct experience” requirement
`introduces unnecessary ambiguities into the description of the level of
`ordinary skill in the art. For example, Patent Owner argues that Petitioner’s
`declarant Dr. Bevly lacks the required “direct experience” because he did
`not have the requisite experience, yet Patent Owner’s declarant Dr. Wilhelm
`did have that experience, because he “undertook significant self-education”
`regarding milling machines as part of his work on this case. See PO
`Resp. 19–23. In Patent Owner’s view, “direct experience” merely requires
`reviewing some additional milling machine literature and a visit to Patent
`Owner’s facility as a retained litigation consultant. See PO Resp. 20–21
`(citing Ex. 2004 ¶¶ 28–29); Pet. Reply 25. Dr. Bevly would seem to have
`gained the same “direct experience” through his efforts in this proceeding.
`Patent Owner’s contrary positions demonstrates the ambiguity in the term
`“direct experience.” See Pet. Reply 25 (citing Ex. 1047 ¶¶ 6, 44–50). Given
`the ambiguity that Patent Owner’s proposal introduces, we do not find it
`
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`helpful, and even if we adopted Patent Owner’s proposal, our findings and
`conclusions in this case would remain the same.
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions in light of
`the specification of the patent in which they appear. See 37 C.F.R.
`§ 42.100(b) (2018); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142 (2016) (upholding the use of the broadest reasonable
`interpretation standard).7 “In claim construction, [our reviewing] court gives
`primacy to the language of the claims, followed by the specification.
`Additionally, the prosecution history, while not literally within the patent
`document, serves as intrinsic evidence for purposes of claim construction.”
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014).
`“Under a broadest reasonable interpretation, words of the claim must be
`given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016).
`In the Petition, Petitioner does not argue for any particular claim
`constructions, and instead asserts that “the Board should apply the broadest
`
`
`7 The revisions to our claim construction standard do not apply to this
`proceeding, filed on May 24, 2018, because the new “rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.” 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) (codified at 37 C.F.R. § 42.100
`(2019)).
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`reasonable construction to all claim terms in the ’395 patent.” Pet. 8. Patent
`Owner raises two claim construction arguments, which we address in turn.
`1. “Milling Operation”
`Patent Owner argues that the term “milling operation,” which appears
`in every challenged independent claim, should be construed to mean “the act
`of milling.” PO Resp. 14–15. Patent Owner distinguishes the “act of
`milling” from merely operating a milling machine. See id. In support of its
`position, Patent Owner relies on the ’395 patent specification, which notes
`disadvantages in prior art machines that could not swap sensors “during [the]
`milling operation without interruption of the milling operation and without
`any erratic alteration of the at least one adjustment value.” Id. (citing
`Ex. 1001, 1:34–53, 2:7–14, 2:24–30, 2:37–42; Ex. 2004 ¶¶ 86–88).
`Petitioner does not oppose Patent Owner’s proposed construction, or argue
`for a different construction, despite our invitation to do so, if necessary. See
`Dec. 9.
`We agree with and adopt Patent Owner’s proposed construction, as
`we did for preliminary purposes in our Institution Decision. See id. at 8–9.
`The specification of the ’395 patent clearly distinguishes swapping sensors
`“during [the] milling operation without interruption” from methods where
`the machine must be stopped to change sensors, even if the cutting drum
`continues to rotate and “cuts clear when standing.” Ex. 1001, 1:34–53.
`Claim 1 also emphasizes that the sensor swap occurs not only without
`interruption of the milling operation, but also “without any erratic alternation
`of the at least one adjustment value,” which is a concern when swapping
`sensors during the act of milling, not when swapping sensors if the milling
`
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`drum and machine are stopped. See PO Resp. 15. We therefore construe
`“milling operation” to mean “the act of milling.”
`2. “Selected Subset”
`Independent claims 1 and 11 include the terms “selected subset,”
`“first selected subset,” and “second selected subset.” Patent Owner argues
`that “the adjective ‘selected’ must be construed to modify the term ‘subset’
`of sensors” and “necessarily acts to define a smaller group of sensors of the
`plurality of sensors.” PO Resp. 16. Patent Owner then relies on a dictionary
`definition of “selected” and contends that we should construe the phrase
`“selected subset” to mean “a subset of sensors purposefully chosen for
`preference or special quality over other available sensors.” Id. (citing
`Ex. 2004 ¶ 90). Patent Owner contends that the ’395 patent supports this
`construction by describing a switchover from a current sensor to a pre-
`selected sensor, “which connotes purposeful selection of the pre-selected
`replacement sensor.” Id. (citing Ex. 1001, 2:27–30; Ex. 2004 ¶ 91). Patent
`Owner also argues that the claim language supports the construction because
`the term “selected” modifies “subset,” suggesting that “each component of
`the subset is ‘selected.’” Id. at 17 (citing Ex. 2004 ¶ 91); see also PO Sur-
`Reply 17–18.
`
`Petitioner argues that Patent Owner’s construction is inconsistent with
`the specification, and that the dictionary-driven construction for the term
`lacks any support in the specification or prosecution history. Pet. Reply 11–
`12 (citing Ex. 1047 ¶¶ 52–66). Petitioner contends that the term “pre-
`selected” in the specification merely refers to a sensor chosen before some
`event, not “a sensor purposefully chosen for preference or special quality.”
`Id. at 12 (citing Ex. 1043, 3). Petitioner argues that we should construe
`
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`“selected subset” to mean “a subset that is chosen.” Id. at 13. Petitioner
`relies on the claim language, which refers to a switch over from control
`based on one subset to control based on another, suggesting “a subset that is
`chosen for control.” Id. Petitioner also relies on the specification, which
`discloses a first selected subset that is merely in use rather than selected for
`preference or a special quality, and a second subset also merely chosen for
`control by exchanging a sensor with the first subset. Id. (citing Ex. 1001,
`4:30–31). Petitioner also contends that Patent Owner relies on a “cherry-
`picked dictionary definition,” and other dictionary definitions support
`Petitioner’s construction. Id. at 12–13 (citing Ex. 1043, 4; Ex. 1048, 64:6–
`11, 65:15–22, 66:9–12).
`
`We agree with Petitioner. The only direct support for the language in
`Patent Owner’s construction stems from a dictionary definition. See PO
`Resp. 16. This follows from Patent Owner’s claim construction process,
`which starts with a general dictionary definition and then looks for support
`for that definition in the specification. See id. at 16–17. That approach
`directly conflicts with the procedure set forth in Phillips. See Phillips v.
`AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en banc) (overruling
`prior case law that incorrectly “suggested a methodology for claim
`interpretation in which the specification should be consulted only after a
`determination is made, whether based on a dictionary, treatise, or other
`source, as to the ordinary meaning or meanings of the claim term in
`dispute.”). Patent Owner’s selection of one dictionary definition over others,
`such as that relied on Petitioner, also lacks adequate reasoning. See
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371 (Fed. Cir. 2008)
`(holding that reliance on a single dictionary was legal error where the
`
`16
`
`
`
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`
`dictionary definition was one of several possible meanings). Petitioner’s
`proposed construction more closely aligns with the specification, which does
`not discuss the subsets of sensors in a manner that suggests any sensors are
`“purposefully chosen for preference or special quality over other available
`sensors” as Patent Owner contends. See Ex. 1001, 2:27–30, 4:30–31.
`Accordingly, we construe “selected subset” to mean “a subset that is
`chosen.”
`
`D. Obviousness Based on Davis and Brabec
`Relying on the Bevly Declaration, Petitioner alleges that Davis and
`Brabec render claims 1, 3, 5–8, 10, 11, 13, 15–17, 19, 20, 22, 24, 26, and 27
`obvious under 35 U.S.C. § 103. Pet. 24–64. Patent Owner, relying on the
`Wilhelm Declaration and other evidence of record, argues that the
`challenged claims would not have been obvious. PO Resp. 27–61.
`1. Overview of Davis
`Davis discloses “a road scarifier for cutting road surfaces.” Ex. 1004,
`Abstract. The scarifier includes cutting drum 11 for working road surface 12
`based on the position of hydraulic jacks that position cutting drum 11. Id.
`¶¶ 32, 33.
`Petitioner’s annotated version of Figure 2 of Davis is reproduced
`below:
`
`17
`
`
`
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`
`
`
`Figure 2 of Davis, annotated above, depicts cutting drum 11 and sensors 13,
`14 along both sides of the scarifier. Ex. 1004 ¶ 32, 34. Front jacks 8 and 9
`and rear jacks 7 and 10 can be controlled hydraulically independent of one
`another so that cutting drum 11 can be parallel to the road surface or sloped
`at an incline relative to the road surface. Id. ¶ 33. Sensors 13, 14 send their
`signals to data processing systems 16 and 17, and inclination sensor 18 sends
`a signal to data processing system 19. Id. ¶¶ 35–37. “[I]t is possible to set
`two of the three parameters necessary for the setting of the scarification in
`the first data processing systems 16, 17, or 19, since the third parameter can
`be derived from the other two.” Id. ¶ 38. In operation, each system 16, 17,
`19 compares the set parameters for cutting drum depth and angle to
`measured readings and sends control signals to the hydraulic system to
`eliminate any differences between the set and actual readings. Id. ¶ 42.
`
`18
`
`
`
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`
`2. Overview of Brabec
`Brabec discloses an automatic mode in a controller for grading
`implements. Ex. 1005, Title. Brabec’s method allows a controller to
`recognize the unavailability of a sensor and to switch automatically to an
`alternative control mode using an additional sensor. Id. at Abstract. When
`the controller utilizes the additional sensor, the controller uses “the last
`known value for the alternative mode” as the set point. Id. The method
`“replaces manual intervention by the operator with a new automatic method
`of intervention by the controller.” Id. ¶ 11.
`Petitioner’s annotated version of Brabec’s Figure 5 is reproduced
`below:
`
`
`
`Figure 5 of Brabec, annotated above, depicts the use of alternate sensor 42
`by controller 28 when right sensor 22 becomes unavailable and does not
`output a valid signal. Ex. 1005 ¶ 36. When this occurs, “[t]he last signal
`
`19
`
`
`
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`
`output by the alternate sensor 42 prior to the right sensor 22 becoming
`unavailable is used as a set point for the right channel of the controller 28.”
`Id. In that way, Brabec’s system uses alternate sensor 42 to keep the right
`side in the same position as it was when right sensor 22 became blocked. Id.
`3. Claim 1
`a. Disclosure of Claim 1’s Limitations
`Petitioner sets forth how the combination of Davis and Brabec
`discloses each limitation in claim 1. Pet. 31–45. Petitioner also sets forth
`reasons to combine Davis and Brabec. Id. at 25–31. With the exception of
`the “selected subset” limitations we discuss below, Patent Owner does not
`challenge Petitioner’s contention that—if combined, an issue we will
`address further below—the combination of Davis and Brabec discloses all of
`the limitations of claim 1.8 For the reasons provided below, we are
`persuaded that the combination discloses all of the limitations of claim 1.
`Petitioner relies on Davis for its disclosure of a road scarifier that
`employs sensors and a controller to maintain a desired depth and slope of a
`cutting drum. Pet. 24. Petitioner relies on Brabec as disclosing a
`construction machine controller system that switches over to an alternate
`sensor without stopping machine operation. Id. According to Petitioner,
`one of ordinary skill in the art “would merely need to incorporate Brabec’s
`
`
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