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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 51
`Entered: July 17, 2019
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`PUBLIC VERSION
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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 IPR2017-02185
`Patent 7,828,309 B2
`_______________
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION (Revised)
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
`This revised Final Written Decision replaces our Final Written
`Decision (Paper 41), which has been vacated. This revised Final Written
`Decision includes modifications based on our Decision (Paper 47) to grant
`Patent Owner’s Request for Rehearing (Paper 44).
`Caterpillar Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–3, 5–24, and 26–36 of U.S.
`Patent No. 7,828,309 B2 (Ex. 1001, “the ’309 patent”). Wirtgen America,
`Inc. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
`(“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 1–3, 5–24, and
`26–36, on all the grounds asserted in the Petition. Paper 7 (“Dec. Inst.”).
`Patent Owner filed a Response to the Petition (Paper 22, PO Public
`Response; Paper 23, PO Confidential. Response) (we cite generally as “PO
`Resp.”). Petitioner filed a Reply (Paper 31, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 36, “PO Sur-reply”).
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`2
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`Petitioner submitted 23 exhibits (Exs. 1001–1019, 1022, 1024–1026).
`Petitioner relies, in part, on the opinion testimony of Thomas Labus1. See
`Ex. 1002.
`Patent Owner submitted sixty-one exhibits (Exs. 2001–2059, 2070,
`2071). Patent Owner relies, in part, on the opinion testimony of Dr. John H.
`Lumkes2. See Ex. 2015.
`A hearing was held January 29, 2019. Paper 40 (“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 1–3, 5–
`9, 11–16, 21–24, 26–28, and 33–36 are unpatentable. Petitioner has not
`
`
`1 Mr. Labus has over forty nine years of experience in the areas of fluid
`mechanics, high-pressure engineering, actuation/control systems, hydraulics,
`pneumatics, rotary and linear reciprocating seals, materials evaluation, and
`mechanical design and analysis. He earned degrees in Aeronautical
`Engineering and Theoretical and Applied Mechanics. Ex. 1002 ¶ 6. Mr.
`Labus is a Professor Emeritus of Mechanical Engineering, retired from the
`Milwaukee School of Engineering. Id. ¶ 7. He is a co-inventor on one U.S.
`patent. Id. ¶ 15.
`2 Dr. Lumkes earned a Bachelor of Science in engineering, a Master of
`Science in engineering, each with a concentration in mechanical
`engineering, and a Ph.D. in mechanical engineering. Ex. 2015 ¶ 10. Dr.
`Lumkes is a Professor at Purdue University in the Agricultural and
`Biological Engineering Department. His research at Purdue focuses on
`agricultural mechanization, digital hydraulics, vehicle design, and control
`systems. Id. at ¶ 8.
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`3
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`established by a preponderance of the evidence that claims 10, 17–20, and
`29–32 are unpatentable.
`
`Related Matters
`A.
`Petitioner states the ’309 patent is currently being asserted by Patent
`Owner against “Caterpillar entities” in three U.S. proceedings: (1) ITC
`Investigation No. 337-TA-1067, entitled “Certain Road Milling Machines
`and 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 ’309
`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
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`4
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`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 ’309 patent. Ex. 3004, 13. The
`Commission instituted an investigation that included whether claims 1–3, 5–
`24, and 26–36 of the ’309 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 ’309 patent for all but three dependent claims, claims 10, 29,
`and 36. See Ex. 3005 (granting Wirtgen’s [PO’s] unopposed motion
`terminating the investigation for claims 2, 3, 5, 7–9, 12, 15, 16, 18–24, 27–
`28, and 30–35 of the ’309 patent); Ex. 3006 (granting Wirtgen’s [PO’s]
`unopposed motion terminating the investigation for claims 1, 6, 11, 13, 14,
`17, and 26 of the ’309 patent). Thus, for the ’309 patent, only claims 10, 29,
`and 36 remained for ITC consideration.
`Caterpillar asserted that claims 10 and 29 would have been obvious
`based on Swisher and Neumeier references, and that claim 36 would have
`been obvious based on Swisher, Neumeier, and Frey. Ex. 3004, 94, 120. As
`
`
`3 Exhibit 2071 was filed by Patent Owner. Exhibit 3004 was downloaded
`from the ITC Electronic Document Information System (EDIS). They are
`the same decision, an ITC Initial Determination (ID”), although their
`formatting and pagination differ. Exhibit 2071 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 Initial Determination.
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`discussed below, these are the same references asserted against claims 10,
`29, and 36 in this IPR proceeding.
`The Initial Determination in the ITC proceeding was that “Caterpillar
`has not shown, through clear and convincing evidence, that the asserted
`claims of the '309 Patent [claims 10, 29, and 36] are invalid under 35 U.S.C.
`§§ 102 or 103.” Id. at 436 (see Finding No. 18). 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 as to claim 36
`and maintained the ID as to claims 10 and 29. The Commission issued a
`Notice stating:
`the Commission has determined to review the final ID [Ex. 3004]
`in part. In particular, the Commission has determined to review
`the ALJ’s findings and analysis pertaining to the obviousness
`determinations with regard to claims 26, 35, and 36 of the ‘309
`patent, see ID at 107-111, 120-123, 124-128, 128-130, 130-136,
`and, on review, to state that these findings and analysis lead to
`the conclusion that claims 26, 35, and 36 are invalid as obvious.4
`As a result, the Commission modifies the conclusion of law No.
`18 on page 436 of the ID to read as follows: ‘18) Caterpillar
`has shown through clear and convincing evidence that asserted
`claim 36 of the ‘309 Patent is invalid as obvious under 35
`U.S.C. § 103. Caterpillar has not shown through clear and
`convincing evidence that asserted claims 10 and 29 of the ‘309
`Patent are invalid under 35 U.S.C. § 103.’
`
`
`4 Claim 36 is the claim at issue. Claim 36, however, depends from
`dependent claim 35, which depends from independent claim 26.
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`The Commission has determined not to review the remainder of
`the ID.
`Ex. 3003, 2 (emphasis added).
`
`Asserted Grounds
`B.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 1035 based on the following grounds (E.g., Pet. 14, 64):
`
`References
`U.S. Patent No. 4,325,580 (Ex. 1004,
`“Swisher”) and German Patent Pub. No.
`DE1918393 (Ex. 1005, “Neumeier”)
`
`Claims challenged
`1–3, 5–10, 14–23, and
`26–35
`
`Swisher, Neumeier, and U.S. Patent
`Pub. No. 2002/0074758 (Ex. 1006,
`“Frey”)
`
`11–13, 24, and 36
`
`The ’309 Patent
`C.
`The ’309 patent relates generally to a road-building machine, such as
`a road-milling machine. Ex. 1001, 1:10–11. A representation of a road-
`milling machine of the type referred to in the ’309 patent is shown below.
`
`
`5 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 version of the statute.
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`A representative road-milling machine. Ex. 2028, 8.
`As shown, a typical road-milling machine, also referred to as a “cold
`milling” machine (see Ex. 2028, 1) uses four wheels or “caterpillars”6 for
`moving the machine along a roadway. A milling or cutting drum is
`positioned between the caterpillars to cut the road surface, as shown in the
`following illustration.
`
`
`6 In mechanical engineering, a “caterpillar” is an endless track, driven by
`sprockets or wheels, used to propel a heavy vehicle and enable it to cross
`soft or uneven ground. See Collins English Dictionary, Complete and
`Unabridged, 12th Edition, 2014. Retrieved April 24, 2018 from
`https://www.thefreedictionary.com/caterpillar.
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`Road-milling machine
`showing milling or cutting drum. Ex. 2028, 33.
`The cutting drum includes teeth or bits that dig into and grind the pavement.
`Ex. 2015 ¶ 35. The ground pavement is directed to a conveyor that carries
`the ground pavement to a truck for removal. Id.
`In the disclosed machine, because of uneven road surfaces, each of the
`four caterpillars may need to be at different heights to maintain the desired
`height and orientation of the cutting drum above the road surface. For
`example, if the working rotor is employed between the front and rear tracks
`or wheels of a road-milling machine, then, as shown below, during milling
`operations, the front tracks will lie on the uncut portion of the road, while
`the rear tracks will follow at a lower elevation within the cut.
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`Road-milling machine showing front and rear
`caterpillars at different heights. Ex. 2028, 32.
`A significant feature of the disclosed machine is that the caterpillars
`are height-adjustable. Ex. 1001, 1:10–15. The objective of the height
`adjustable wheels is to maintain the road milling or other tool in its desired
`position for the task at hand as it traverses the usually uneven road being
`built, thereby avoiding an uneven road surface. Id. at 2:17–23. Height
`adjustment of each wheel is provided by an “actuating member.”
`Id. at 2:32–36. The actuating members also serve to connect the respective
`wheel to the chassis of the road-building machine. Id. The actuating
`members are “connected rigidly” to the chassis of the road-building machine
`and are “positively coupled” to one another. Id. at 2:40–42. The
`Specification states that the positive coupling “ensures . . . high stability,”
`which is particularly important in a road-building machine. Id. at 3:1–4.
`The Specification summarizes and characterizes the height-adjustable
`feature by stating that the disclosed “road-building machine according to the
`invention puts into practice virtually a floating mount of both the front axle
`and the rear axle, with the result that stability is decisively improved.”
`
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`Id. at 3:6–9. The repeated emphasis of the disclosed system is improved
`“stability.” E.g., id. at 2:13–16) (“The object on which the present invention
`is based is, therefore, to improve the stability of the road-building machines
`initially mentioned, as compared with the prior art mentioned.”); 5:19–21
`(“FIG. 7 shows a diagrammatic illustration of the road-building machine
`according to the invention to make clear its stability.”).
`In a preferred form of the disclosed road-building machine, the
`actuating members “are designed as double-acting working cylinders.”
`Id. at 3:21–23. These working cylinders have chambers filled with a
`“pressure medium,” such as hydraulic oil. Id. at 3:23–26. The working
`cylinders are connected to one another by coupling lines. Id.
`Figure 1 from the ’309 patent, annotated by Petitioner (see Pet. 2, 26),
`is reproduced below.
`
`
`Figure 1 from the ’309 patent is a diagrammatic illustration,
`annotated by Petitioner, of a disclosed road-building machine.
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`As shown in Figure 1 of the ’309 patent, the road-building machine
`includes “wheels” or caterpillars 4, 6, 8, and 10 supported by working
`cylinders 12, 14, 16, and 18, respectively. Ex. 1001, 5:35–55. Each
`working cylinder (12, 14, 16, 18) has a first chamber (20, 22, 24, 26,
`respectively) and a second chamber (28, 30, 32, 34, respectively).
`Id. at 5:60–64. Filling the first working chamber or emptying the second
`working chamber lowers the associated wheel, whereas filling of the second
`working chamber or emptying the first working chamber raises the
`associated wheel. Id. at 6:1–7.
`As also shown in Figure 1, working cylinders 12, 14, 16, 18 are
`connected to one another by coupling lines 36, 38, 40, 42. Id. at 6:8–30.
`The Specification characterizes a “conventional” road-building
`machine as having stability “described by a stability triangle.” Id. at 10:49–
`50. In contrast to a conventional road-building machine, the Specification
`characterizes the stability of a road-building machine according to the
`disclosed invention as “described by . . . a stability lozenge.”7 Id. at 11:19–
`22; see also Fig. 7 (comparing the “stability triangle” of prior art machines
`with the “stability lozenge” of the disclosed invention).
`
`
`7 A “lozenge” is a figure with four equal sides, two acute angles, and two
`obtuse angles. Ex. 3007. A “lozenge” also is referred to as a “rhombus or
`diamond shape.” Ex. 3008.
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`Representative Claim
`D.
`Of the challenged claims, claims 1 and 26 are independent. Claim 1 is
`reproduced below:
`1. A road-building machine, of which a left front wheel or
`caterpillar, right front wheel or caterpillar, left rear wheel or
`caterpillar and right rear wheel or caterpillar is connected to a
`chassis of the road-building machine by means of an actuating
`member and is adjustable in height with respect to a frame of the
`road-building machine,
`the individual actuating members being connected rigidly
`to the chassis and being positively coupled to one another in such
`a way that the left front wheel or caterpillar and the right rear
`wheel or caterpillar can be adjusted in height in the same
`direction and in the opposite direction to the right front wheel or
`caterpillar and the left rear wheel or caterpillar, and
`the actuating members being designed as double-acting
`working cylinders with a first and a second working chamber
`which are filled with a pressure medium, the working cylinders
`being connected to one another via coupling lines.
`Ex. 1001, 11:44–59 (paragraphing added).
`Independent claim 26 also is directed to a “road-building machine.”
`Id. at 13:58). Independent claim 26 differs from independent claim 1in that
`it defines the “double-acting working cylinders” (id. at 11:55–56) of the
`actuating members in claim 1 simply as a “working cylinder” (id. at 13:64)
`with “at least one working chamber” (id. at 14:17–18); independent claim 26
`includes a specific recitation of “a rotating working roller or rotor supported
`from the chassis” (id. at 14:13–14) that is not recited in claim 1; and
`independent claim 26 recites that the coupling between the working
`cylinders is “hydraulic coupling” (id. at 14:20).
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`II. ANALYSIS
`Claim Construction
`A.
`The Petition was filed on October 19, 2017. Paper 3. This was before
`the Patent and Trademark Office implemented a new rule on claim
`construction adopting the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b). See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Nov. 13, 2018) (to be codified at 37 C.F.R. pt. 42). This new rule was
`effective on November 13, 2018, and applies to all petitions filed on or after
`the effective date. Id. This claim construction standard is generally referred
`to as the Phillips standard. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005) (en banc). Because the Petition before us was filed before the
`effective date of the new rule, our old rule, using a “broadest reasonable”
`claim construction, applies to this case. See 37 C.F.R. 42.100 (2016).
`“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). The correct inquiry in giving a claim term
`its broadest reasonable interpretation in light of the specification is “an
`interpretation that corresponds with what and how the inventor describes his
`invention in the specification, i.e., an interpretation that is ‘consistent with
`the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
`Cir. 2017) (citations omitted). The broadest reasonable interpretation differs
`from the “broadest possible interpretation.” Id.
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`Proper claim construction requires interpretation of the entire claim in
`context, not a single element in isolation. Hockerson-Halberstadt, Inc. v.
`Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms
`may be at the center of the claim construction debate, the context of the
`surrounding words of the claim also must be considered in determining the
`ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney
`Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
`Only terms that are in controversy need to be construed expressly, and
`then only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`1. “Connected . . . By Means Of”
`Petitioner asserts only one specific construction, and then only if a
`phrase is construed as a “means plus function” phrase under 35 U.S.C.
`§ 112 ¶ 6. Petitioner states:
`To the extent the claim phrase “connected to a chassis of the
`road-building machine by means of an actuating member” in
`claim 1 of the ’309 patent is deemed to require a construction
`under 35 U.S.C. § 112, ¶6, it should be construed to mean
`“connected to a chassis of the road-building machine by means
`of a double-acting working cylinder.” The claim language
`suggests that the function is connecting to the chassis.
`Pet. 4.
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`Patent Owner does not comment in its Response on Petitioner’s
`proposed construction. See Scheduling Order (“The patent owner is
`cautioned that any arguments for patentability not raised in the response will
`be deemed waived.”), Paper 8, 7.
`“[U]se of the word ‘means’ [in a claim element] creates a presumption
`that § 112, para. 6 applies.”8 Williamson v. Citrix Online, LLC, 792 F.3d
`1339, 1349 (Fed. Cir. 2015) (citing Personalized Media Commc’ns, LLC v.
`Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998)). In making the
`assessment of whether the limitation in question is a means-plus-function
`term subject to the strictures of § 112 ¶ 6, the case law emphasizes that “the
`essential inquiry is not merely the presence or absence of the word ‘means’
`but whether the words of the claim are understood by persons of ordinary
`skill in the art to have a sufficiently definite meaning as the name for
`structure.” Williamson, 792 F.3d at 1348.
`The phrase in question, that each wheel is “connected to a chassis of
`the road-building machine by means of an actuating member” (Ex. 1001,
`11:44–48) does not recite a specific function. The word “connected” states a
`relationship between the wheel and the chassis. The connector is the
`“actuating member.” Claim 1 recites specifically the structure of the
`“actuating members.” They are defined as “double-acting working cylinders
`with a first and a second working chamber which are filled with a pressure
`medium.” Id. at 55–58. The words “cylinders” and “chambers” used in
`claim 1 to define the “actuating member” are common words that we
`
`
`8 Section 112, para. 6, is a reference to the pre-AIA version of the statute.
`This pre-AIA section is now § 112(f) under the current law.
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`determine are understood by persons of ordinary skill in the art to have a
`sufficiently definite meaning as the name for structure.
`Thus, based on the evidence, we determine that the phrase “connected
`to a chassis of the road-building machine by means of an actuating member”
`in claim 1 is not in means-plus-function format.
`We also determine that this phrase does not require specific
`construction.
`
`2. Preamble
`Patent Owner argues that the term “road-building machine” in the
`preamble of independent claims 1 and 26 is limited to “road milling
`machines, recyclers, and stabilizers.” PO Resp. 8–11; PO Sur-reply 3–5.
`Petitioner disagrees. Reply 2–3. We determine that whether the preamble
`of the claims is, or is not, limiting to the challenged claims is not outcome
`determinative to patentability. Therefore, it is not necessary to resolve this
`controversy and we need not decide this issue. Nidec Motor Corp., 868 F.3d
`at 1017.
`We note that the preamble phrase “road-building machine” was not
`specifically construed in the ITC decision. In its substantive analysis,
`however, the ITC treated the preamble phrase as a limitation. See e.g.,
`Ex. 3004, 94–95 (addressing validity of claim 1 based on Swisher and
`Neumeier; considering the preamble phrase “road-building machine;” and
`determining that “Swisher discloses this element of the claimed invention”)
`(emphasis added).
`
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`Level of Skill in the Art
`B.
`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).
`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, 261 F.3d at 1355.
`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).
`Neither party presents a detailed evidentiary showing of factors
`typically considered in determining the level of ordinary skill.
`Petitioner asserts that a person having ordinary skill in the art would
`have had: a bachelor’s degree in mechanical engineering or an equivalent
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`degree and two to five years of experience working on mobile construction
`machine design; or seven to ten years of experience working on mobile
`construction machine design. Pet. 4 (citing Ex. 1002 ¶¶ 22–24). Mr. Labus
`mentions the factors he considered (Ex. 1002 ¶ 22), but does not explain
`how these factors influenced his opinion on the level of ordinary skill in the
`art (id.).
`Patent Owner refers repeatedly to a person of “ordinary skill” (see
`e.g., PO Resp. 12 (“A POSA [Person of Ordinary Skill in the Art] would not
`have modified Swisher’s road-milling machine with Neumeier’s network of
`connected hydraulic cylinders.”)) but does not propose what is that level of
`skill. Patent Owner also does not comment on Petitioner’s proposed level of
`skill.
`At the hearing, Patent Owner stated that the level of skill adopted in
`our Decision to Institute a Trial (see DI 14) was an appropriate level of skill
`to use for this proceeding. Tr. 36:1–37:5. Petitioner agreed. Id. at 7:10–11
`(“Petitioner has no objection to the definition of a level of ordinary skill in
`the art that is recited in the institution decision.”).
`We have not been directed to any evidence in the record concerning
`the educational level of the inventors of the ’309 patent or the educational
`level of workers active in the field.
`The prior art reflects a knowledge of mechanical engineering, mobile
`road-building equipment suspension systems, mobile farm equipment
`suspension systems, off-road vehicle suspension systems, hydraulics, and/or
`hydraulic control systems. See e.g., Ex. 1001, 1:26–65.
`
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`Based on the evidence before us, we adopt the level of skill stated in
`the Decision to Institute. We find a person having ordinary skill in the art
`would have had a bachelor’s degree in mechanical engineering, or an
`equivalent degree, and two to five years of experience working on mobile
`road-building equipment suspension systems, mobile farm equipment
`suspension systems, off-road vehicle suspension systems, hydraulics, and/or
`hydraulic control systems, or an equivalent balance of education and work
`experience.
`
`C.
`
`Patentability of Claims 1–3, 5–10, 14–23, and 26–35
`in view of Swisher and Neumeier
`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
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`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.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the quest
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