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`EXHIBIT 53
`EXHIBIT 53
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`EXHIBIT 53
`EXHIBIT 53
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`Paper 9
`Trials@uspto.gov
`571-272-7822
`Entered: January 23, 2023
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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.
`____________
`
`IPR2022-01264
`Patent 9,879,390 B2
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Caterpillar Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–22 of U.S. Patent No. 9,879,390 B2 (Ex. 1001, the “’390 patent”).
`Paper 21 (“Pet.”). Wirtgen, Inc. (“Patent Owner”) timely filed a Preliminary
`Response to the Petition. Paper 8 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). The Board
`determines whether to institute a trial on behalf of the Director. 37 C.F.R.
`§ 42.4(a) (2022).
`For the reasons set forth below, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that at least one of the
`challenged claims is unpatentable. Accordingly, we institute an inter partes
`review of all challenged claims and on all grounds asserted in the Petition.
`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating
`that a decision to institute is “a simple yes-or-no institution choice respecting
`a petition, embracing all challenges included in the petition”).
`Real Parties-in-Interest
`B.
`Caterpillar identifies itself as well as its subsidiaries Caterpillar
`Paving Products, Inc. and Caterpillar Prodotti Stradali S.r.L. as real parties-
`in-interest. Pet. 80. Wirtgen identifies itself and Wirtgen GmbH as real
`parties-in-interest. Paper 6, 1.
`
`
`1 We refer to the public version of the Petition. Petitioner filed a
`confidential version of the Petition under seal as Paper 1.
`
`2
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`Related Matters
`C.
`Petitioner and Patent Owner each identify the following district court
`
`proceeding as a related matter: Wirtgen Am., Inc. v. Caterpillar, Inc., Case
`No. 17-770-RGA (D. Del.). Pet. 81; Paper 6, 2.
`
`Petitioner and Patent Owner also each identify the following pending
`inter partes review proceeding as a related matter: IPR2022-01277
`challenging claims in U.S. Patent 9,879,391, which matured from a
`continuation application of the ’390 patent. Pet. 81; Paper 6, 2; see
`IPR2022-01277, Ex. 1001, code (60).
`The ’390 Patent
`D.
`The ’390 patent, titled “Road Milling Machine and Method for
`Measuring the Milling Depth,” issued January 30, 2018, from an application
`filed December 12, 2016. Ex. 1001, codes (22), (45), (54). The ’390 patent
`ultimately claims priority to a U.S. application filed December 20, 2007, and
`a German application filed December 22, 2006. Id., codes (30), (60).
`The ’390 patent relates to “a self-propelled road milling machine,
`especially a cold milling machine, as well as [] methods for measuring the
`milling depth.” Ex. 1001, 1:21–23. The ’390 patent explains that “a problem
`with known road milling machines [is] that the milling depth can not be
`controlled accurately enough” so that measuring “an adjustment of side
`plates, for example, with respect to the machine frame is not sufficiently
`accurate.” Id. at 1:45–56. The ’390 patent purports to address this problem,
`in one embodiment, by using side plates having sensors “spaced apart in the
`travelling direction.” Id. at 3:31–39. Figure 1 of the ’390 patent is
`reproduced below.
`
`3
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`Figure 1 “shows a cold milling machine.” Ex. 1001, 3:55. The
`milling machine includes machine frame 4 supported by a track assembly
`having two front chain tracks 2 and at least one rear chain track 3 through
`lifting columns 12, 13. Id. at 4:7–11. Lifting columns 12, 13 allow machine
`frame 4 to be moved to a predetermined inclined position with respect to the
`ground or traffic surface 8. Id. at 4:13–15. Machine frame 4 supports
`milling roll 6, and arranged behind milling roll 6 is height-adjustable
`stripping means 14 which, in operation, has stripping plate 15 that engages
`milling track 17 formed by milling roll 6. Id. at 4:16–26. Side plates 10 are
`arranged on either side near the front end of milling roll 6. Id. at 4:35–36.
`Position sensors measure the displacements of side plates 10 or stripping
`plate 15 with respect to machine frame 4 or relative to each other. Id.
`at 4:45–53.
`Figure 7a of the ’390 patent, reproduced below, illustrates an
`embodiment of position sensors of the side plates.
`
`4
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`Figure 7a depicts a schematic illustration of the measurement error
`
`occurring at the stripping plate of the stripping means in the absence of
`parallelism between the machine frame and the ground or traffic surface.
`Ex. 1001, 3:67–4:2. Figure 7a illustrates the extent to which side plates 10
`are pivotable with respect to machine frame 4. Id. at 6:18–20.
`Piston/cylinder units 30, 32 include position sensing systems, and their
`measuring signals may be used to determine the distance of side plates 10
`from machine frame 4. Id. at 6:20–24.
`Should two measuring means be used, one in front of the side
`plates 10 and one behind the same, seen in the travelling
`direction, it is also possible to determine the longitudinal
`inclination of the machine frame 4 with respect to the ground or
`traffic surface 8 or to also determine the transverse inclination
`of the machine frame 4 by a comparison of the measured values
`for both side plates 10 on both sides of the milling roll 6.
`Id. at 5:43–50.
`
`Illustrative Claim
`E.
`Among the challenged claims, claims 1 and 13 are independent
`claims. Independent claim 1 is illustrative and is reproduced below.
`
`5
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`1. A self-propelled road milling machine, comprising:
`[1a] a machine frame;
`[1b] at least two front ground engaging supports, and at
`least one rear ground engaging support;
`[1c] front and rear lifting columns supporting the frame
`from the ground engaging supports;
`[1d] a milling roller supported from the frame for
`treatment of a ground surface;
`[1e] a height adjustable stripping plate arranged behind the
`milling roller and operable to be lowered, during operation, into
`a milling track generated by the milling roller;
`[1f] first and second height adjustable side plates arranged
`on opposite sides of the milling roller; and
`[1g] a plurality of position sensors, each of the first and
`second side plates including at least two of the position sensors
`spaced apart in a traveling direction of the milling machine,
`[1h] wherein each position sensor generates position
`signals representing changes in position for a respective side
`plate.
`Ex. 1001, 6:53–7:42.
`
`
`2 We include labels for the limitations as used by Petitioner, with one
`exception. We separate out the “wherein” clause from limitation [1g] and
`assign it the label [1h]. Cf. Pet. 45 (providing, as limitation [1g] what we
`have labeled [1g] and [1h]).
`
`6
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`35 U.S.C. §3 Basis
`103(a)
`OMM4 and Samuelson5
`103(a)
`OMM, Samuelson, and Zarniko6
`
`Prior Art and Asserted Ground
`F.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1–6, 8–17, 19–22
`7, 8
`Pet. 5.
`Petitioner also relies on the declaration testimony of William
`Singhose, Ph.D. See Ex. 1006 (providing the Declaration).
`The following subsections provide brief descriptions of the asserted
`prior art references7.
`OMM (Ex. 1002)
`1.
`OMM is an operation and maintenance manual for the PM-465 cold
`planer that is used for cold milling pavement. Ex. 1002, Title, 28.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes to
`35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent application
`filed before March 16, 2013. Because neither part disputes that the
`application for the patent at issue in this proceeding has an effective filing
`date before March 16, 2013, we refer to the pre-AIA version of the statute.
`4 Caterpillar, “PM-465 Cold Planer, Operation & Maintenance Manual”
`(Ex. 1002, hereinafter “OMM” for consistency with the Petition).
`5 US 6,450,048 B1, issued Sept. 17, 2002 (Ex. 1004, “Samuelson”).
`6 US 4,943,119, issued July 24, 1990 (Ex. 1005, “Zarniko”).
`7 When discussing prior art references, Petitioner typically italicizes the
`name of the reference. When we quote the Petition, we do not italicize the
`name.
`8 When referencing OMM, we use the pagination of the manual, rather than
`the exhibit, as this approach is consistent with Petitioner.
`
`7
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`We reproduce below Petitioner’s annotated versions of the images
`depicted on pages 2 and 40 of OMM.
`
`
`
`The images on pages 4 and 42 of OMM are annotated by Petitioner to
`denote uncontested components of the milling machine. Pet. 7; see also
`Prelim. Resp. 9–12. In particular, Petitioner adds the title, “Self-propelled
`road milling machine” placed inside a red rectangle. Id. Petitioner also
`denotes the “machine frame,” “milling roller,” “front and rear lifting
`columns,” “front ground engaging supports,” and “rear ground engaging
`support,” by placing these terms in red rectangles and using a lead arrow that
`extends from a rectangle to its respective component. Id. OMM’s machine
`also includes Caterpillar’s “Grade and Slope Electronic Control System,”
`which includes, an “Electronic Control Module,” “grade/slope controllers on
`the left and/or right side of the operator's console, the grade/slope controllers
`at ground level in front and/or behind the mandrel, a contacting or a
`non[-]contacting sensor on each side of the machine, [and] a slope sensor at
`
`8
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`the center of the machine.” Ex. 1002, 32. According to OMM, the
`contacting sensor can include a grade slope wheel as depicted in the image
`on page 49 of OMM, reproduced below.
`
`
`The image on page 49, on the left-hand side of the page, includes a
`black arrow denoting a grade slope wheel adjacent to the side plate of
`machine. Ex. 1002, 49. OMM explains that “[t]he grade slope wheel sends
`signals to the controller as the ground elevation varies.” Id. According to
`OMM, [i]f the machine uses the non-contacting method of measuring the
`grade, a sonic sensor is attached. The sonic grade sensor uses sound waves
`to monitor the distance from a fixed point on the machine to a grade
`reference point (such as: finished surface, curb, gutter, or stringline).” Id.
`OMM notes that “[t]he sensors should be positioned on the centerline of the
`rotor to achieve an accurate cut. The further away from the center of the
`rotor, the less accurate the reading on the readout and the potential for less
`accurate cuts.” Id. at 48.
`
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`Samuelson (Ex. 1004)
`2.
`Samuelson, titled “Hydraulic Cylinder Monitoring Apparatus,” issued
`September 17, 2002. Ex. 1004, codes (54), (45). Samuelson relates to “a
`hydraulic cylinder monitoring apparatus for a welded construction-type
`hydraulic cylinder.” Id. at 1:15–17. Samuelson discloses that hydraulic
`cylinders are used in various industries including “mobile equipment.” Id.
`at 1:35–40. Samuelson recognizes the importance of protecting the position
`measuring structure, e.g. transducer, of the cylinders, while being able to
`interchange “dumb” cylinders without transducers to “smart” cylinders. Id.
`at 1:45–60. Figures 5 and 6 of Samuelson are reproduced below.
`
`
`Figure 5 is a cross sectional view of a hydraulic cylinder having a
`monitoring apparatus disposed therein, and Figure 6 is an enlarged view of
`the circled portion shown in Figure 5. Ex. 1004, 2:53–57. Samuelson
`discloses that in operation, hydraulic cylinder 10 is connected at ends 53
`
`10
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`and 54 to two objects that need to be selectively controlled by being
`separated and then moved back together while the relative spacing is
`monitored by the transducer structure 23 and 24. Id. at 4:17–21.
`Samuelson explains that in Figure 5, a controller, not shown, is
`sensing the position of piston 12 with respect to cap 22 through reference
`supply and/or ground return wires 41 and 41a, which have fixed resistors.
`Id. at 4:22–26. Similarly, output wire 45 is connected to the controller. Id.
`at 4:27–28. According to Samuelson, when pressurized hydraulic oil is
`directed into port 19, cylinder 12 moves to the right and follower 24 will
`move with it, which will change the resistance. Id. at 4:29–33.
`“Consequently, the position of the piston (12) and/or rod (13) can readily be
`monitored as the piston (12) and rod (13) move from one position to another
`within the cylinder (11).” Id. at 4:41–44. Samuelson notes that “[b]ecause
`the fixed resistors (42) and (43) are disposed within the steel confines of the
`supplemental cap (22) and its flange (20), there is very little chance that they
`can be damaged during the use of the device.” Id. at 4:48–51.
`Zarniko (Ex. 1005)
`3.
`Zarniko, titled “Height Control Device and Method for a Fixture for
`Machining an Object Essentially Defined by a Single Plane,” issued July 24,
`1990. Ex. 1005, codes (54), (45). Zarniko “relates to a height control device
`for . . . a milling fixture for stripping road surfacing.” Id. at 1:6–10. Zarniko
`discloses a height control device that “provides for two gauging devices, one
`of which measures the distance to the unmachined plane, the other, the
`distance to the machined plane.” Id. at 2:32–34. We reproduce Zarniko’s
`Figure 1, below.
`
`11
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`Figure 1 depicts “a schematic front view of a milling fixture for
`stripping road surfacing and featuring a height control device in accordance
`with” Zarniko’s invention. Ex. 1005, 3:27–29. Milling fixture 1 includes
`bearing frame 2 and milling cutter 3. Id. at 3:36–37. Zarniko’s height
`control device includes first ultrasonic transceiver 6, second ultrasonic
`transceiver 7, and third ultrasonic transceiver 8 secured to bearing frame 2.
`Id. at 3:57–61. First and third ultrasonic transceivers 6, 8 are positioned
`outside the cutting width of milling cutter 3, so that these transceivers “can
`gauge the distance to the unmachined plane of the road surfacing by sensing
`the ultrasonic propagation time.” Id. at 3:62–66. Second ultrasonic
`transceiver 7 is configured to gauge the distance to the road surface after the
`surface is machined by milling cutter 3. Id. at 3:67–4:1.
`
`
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`II. ANALYSIS
`Legal Standards
`A.
`Section 103 forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others. 9 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`
`
`9 The parties do not direct us to any objective evidence of non-obviousness
`at this stage of the proceeding.
`
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`Id. at 417. To support this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”). As a factfinder, we also must be
`aware “of the distortion caused by hindsight bias and must be cautious of
`arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.
`Level of Ordinary 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). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id. Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`
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`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level
`of ordinary skill, we also may look to the prior art, which may reflect an
`appropriate skill level. Okajima, 261 F.3d at 1355.
`Petitioner asserts that a person of ordinary skill in the art would have
`had “at least a four-year degree in mechanical engineering or a closely
`related field and at least two years of experience designing, developing,
`servicing or operating heavy machinery, including their components and
`control systems.” Pet. 5 (referencing Ex. 1005 ¶ 23). Petitioner also states
`that “[a]dditional education could substitute for professional experience, and
`significant work experience—such as working with, servicing, or operating
`heavy machinery in the field—could substitute for formal education.” Id.
`“Patent Owner does not dispute the Petition’s definition” at this stage
`of the proceeding. Prelim. Resp. 14.
`For purposes of this Decision, based on the prior art, the
`sophistication of the technology at issue, and Dr. Singhose’s Declaration
`testimony, we adopt Petitioner’s undisputed definition of the level of
`ordinary skill.
`
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`C. Claim Construction
`We construe each claim “using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. [§]
`282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are
`generally given their ordinary and customary meaning as would have been
`understood by a person of ordinary skill in the art at the time of the invention
`and in the context of the entire patent disclosure. Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently
`stated that the words of a claim ‘are generally given their ordinary and
`customary meaning.’” (citations omitted)).
`
`Petitioner contends that “[t]he prior art renders all challenged claims
`unpatentable under the plain and ordinary meaning of the claims.” Pet. 610.
`“Patent Owner does not believe that any claim terms need construction to
`resolve the prior art grounds raised in the Petition.” Prelim. Resp. 14.
`We determine that we need not expressly construe any claim terms to
`resolve the parties’ disputes on the record before us. See Realtime Data,
`LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required
`to construe ‘only those terms that . . . are in controversy, and only to the
`extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent
`that the scope of any particular claim term requires discussion, however, we
`provide it in our assessment of the challenges, which we turn to next.
`
`
`10 Petitioner “notes that the parties exchanged preliminary claim
`constructions in the parallel litigation,” offering a construction for a single
`term, “controller,” “[b]ut . . . [t]hat construction is irrelevant to the outcome
`here and the Board thus need not address it.” Pet. 6.
`
`16
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`D. Ground 1: Claims 1–6, 8–17, and 19–22 as unpatentable over
`OMM and Samuelson
`Petitioner contends that the combination of OMM and Samuelson
`teaches or suggests each limitation of claims 1–6, 8–17, and 19–22. Pet. 5,
`6–70. We first address Petitioner’s reasons for combining the teachings of
`OMM and Samuelson.
`Petitioner’s proposed combination of OMM and
`1.
`Samuelson
`We first present Petitioner’s reasoning for combining the teachings of
`OMM and Samuelson to arrive at the subject matter of the claims challenged
`under Ground 1. We then present Patent Owner’s counter arguments, and
`our analysis of the reasoning.
`Petitioner’s reasoning
`a)
`Petitioner contends that OMM and Samuelson are analogous art, as
`both references are in the same field of endeavor and reasonably pertinent to
`the problem that the ’390 patent attempts to solve. Pet. 17–18 (referencing
`Ex. 1002, 3, 32, 48–49; Ex. 1004, 1:35–63, 2:28–31, 4:17–47; Ex. 1006
`¶¶ 63–64); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
`(“References . . . qualify as prior art for an obviousness determination only
`when analogous to the claimed invention.”). Patent Owner does not dispute,
`at this stage of the proceeding, that OMM and Samuelson are analogous art.
`Petitioner contends that a person having ordinary skill in the art
`“would have been motivated to implement sensor-integrated cylinders like
`Samuelson’s on the PM-465 machine [disclosed in OMM] and use them to
`monitor and change the positions of components attached to those
`cylinders.” Pet. 18 (referencing Ex. 1006 ¶ 65), 48–49 (illustrating the
`proposed modification with Samuelson’s cylinders on the side plates). With
`
`17
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`Case 1:17-cv-00770-JDW Document 250-53 Filed 10/25/23 Page 19 of 45 PageID #: 27244
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`respect to modifying the cylinders on OMM’s side plates, Petitioner
`contends that the hydraulic cylinders on the side plates, modified with
`Samuelson’s sensors, would “generate[] signals associated with the
`hydraulic cylinder’s position that are sent to and processed by a controller.”
`Id. at 19 (referencing Ex. 1004, 4:17–57). Petitioner explains that OMM
`describes that its “machine’s grade-and-slope system has controllers that
`receive signals from multiple sensors, and this information is used to control
`the drum’s milling depth by adjusting the ‘heights of the legs.’” Id. at 18–19
`(referencing Ex. 1002, 32, 48–49). Petitioner adds that Samuelson discloses
`that its sensors can be retrofitted into existing hydraulic cylinders, and that
`state-of-the-art evidence demonstrates that writing software for these sensors
`to work in the control system was within the level of ordinary skill. Id. at 19
`(referencing Ex. 1004, 1:54–63, 4:58–62; Ex. 1050; Ex. 1006 ¶ 68).
`Petitioner contends that one motivating factor expressly disclosed in
`Samuelson is that “because of improvements in controller technology, over
`time it became cost effective and easier to use sensor-integrated cylinders in
`mobile construction equipment.” Pet. 19–20 (referencing Ex. 1004,
`1:35–45, Ex. 1006 ¶¶ 61, 81); see also id. at 25 (“A [person having ordinary
`skill in the art] would have known to consider the technological advances in
`the art and to look for ways to improve the PM-465 machine’s design by
`implementing those advances (e.g., by using sensor-integrated hydraulic
`cylinders on the machine).”).
`Petitioner also contends that a person having ordinary skill in the art
`“would have been motivated to use Samuelson’s sensor-integrated cylinders
`(instead of the grade slope wheel) near the PM-465’s side plates to sense the
`ground and determine if the machine is milling at the intended depth.”
`
`18
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`Case 1:17-cv-00770-JDW Document 250-53 Filed 10/25/23 Page 20 of 45 PageID #: 27245
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`Pet. 20. Petitioner explains that an artisan of ordinary skill would have
`understood that “side plates make excellent ground sensors on road-milling
`machines,” as they can move vertically relative to the milling drum. Id.
`Petitioner also describes that the side plates can operate in a “float mode,”
`where the hydraulic cylinders do not apply any downward force on the side
`plates, so the plates are free to move up and down as they travel on the
`ground surface. Id. (referencing Ex. 1002, 39–40; Ex. 1006 ¶ 70); see also
`id. at 49 (contending that a person having ordinary skill in the art “would
`have been motivated to make this sensor-integrated cylinder modification
`because it provides for a robust ground sensing device that directly contacts
`the ground”).
`Petitioner also contends that the side plates being near the centerline
`of the milling drum improves accuracy of sensing the difference between the
`cutting depth and ground surface. Pet. 20 (referencing Ex. 1002, 48–49);
`see, e.g., Ex. 1002, 48 (“When using grade control[,] the position of the
`sensor is important if accuracy of the cut is vital. The sensors should be
`positioned on the centerline of the rotor to achieve an accurate cut.”).
`Petitioner explains that “[i]t was well known in the art to use components
`near the side plates as ground sensors.” Pet. 21–22, 47 (referencing
`Ex. 1002, 2, 48–49; Ex. 1003, 35–36; Ex. 1023, 9:48–61; Ex. 1024,
`38:27–41:20; Ex. 1006 ¶ 71). Petitioner adds that “[t]he state-of-the-art
`even suggests that the side plate itself can be used as a grade sensing
`apparatus on a road-milling machine.” Id. at 22, 47 (referencing Ex. 1003,
`15); see also Ex. 1003, 15 (“[T]he [grade position] sensor can be actuated by
`one of the following devices: wheel, ski, and side plate of the machine.”).
`
`19
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`
`Petitioner concludes that a person having ordinary skill in the art
`“viewing the prior art would have been motivated to consider different ways
`to use side plates as ground sensors in milling machines.” Pet. 22–23
`(referencing Ex. 1006 ¶ 76). Petitioner continues that, based on the
`disclosures in Samuelson, a person having ordinary skill in the art “would
`have been further motivated to incorporate sensor-integrated cylinders into
`the side plates and to use those side plates as sensors by having the
`sensor-integrated cylinders monitor the extent to which the side plate [of the
`PM-465 machine described in OMM] moves up and down as it traverses the
`ground.” Id. at 23 (referencing Ex. 1006 ¶ 76).
`Petitioner also contends that the PM-465’s grade slope wheel may be
`damaged by debris generated during milling, which further supports the
`proposed modification. Pet. 23 (referencing Ex. 1006 ¶ 77; Ex. 1020 ¶ 35;
`Ex. 1005, 1:23–45); see also Pet. 46 (“The prior art explained that
`mechanical wheel sensors (like the grade slope wheel) were ‘easily . . .
`damaged under the rough conditions which normally exist in road repair
`work.’” (referencing Ex. 1005, 1:23–45)). Petitioner adds that ultrasonic
`sensors, an alternative to mechanical sensors, can be “compromised ‘by the
`temperature, flow and humidity of the ambient air, by the operating voltage,
`[and] by the momentary atmospheric pressure.’” Id. (referencing Ex. 1005,
`1:52–68; Ex. 1006 ¶ 77; Ex. 1020 ¶ 35); see also Pet. 46–47 (discussing
`Zarniko’s disclosure on the problems with ultrasonic sensors). Petitioner
`contends that Samuelson solves the problem of damaged mechanical sensors
`by including the sensors in the hydraulic cylinder. Id. at 23–24, 47
`(referencing Ex. 1004, 1:45–49, 4:48–52).
`
`20
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`Case 1:17-cv-00770-JDW Document 250-53 Filed 10/25/23 Page 22 of 45 PageID #: 27247
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`
`Petitioner also contends that its proposed modification that modify
`both hydraulic cylinders on a side plate “would allow the resultant design to
`accomplish grade-averaging, as known in the art, which would minimize the
`variation caused by readings taken by a single sensor.” Pet. 26 (referencing
`Ex. 1051, 10:22–38; Ex. 1006 ¶ 82
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