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`Case 1:17-cv-00770-JDW Document 369-24 Filed 04/12/24 Page 1 of 74 PagelD #: 34049
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`EXHIBIT 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`CATERPILLAR INC.,
`Petitioner
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner
`
`___________________
`
` Case IPR2018-01091
`U.S. Patent No. 8,308,395
`___________________
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`PATENT OWNER’S RESPONSE
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`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case 1:17-cv-00770-JDW Document 369-24 Filed 04/12/24 Page 3 of 74 PageID #: 34051
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`TABLE OF CONTENTS
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`A.
`B.
`C.
`D.
`E.
`
`A.
`
`B.
`
`I.
`II.
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`III.
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`IV.
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`V.
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`INTRODUCTION ................................................................................. 1
`OVERVIEW OF THE ’395 PATENT .................................................. 3
`Technology Background ....................................................................... 4
`Summary of the ’395 Patent .................................................................. 6
`Summary of the ’395 Patent’s Prosecution History .............................. 9
`Italian Litigation of Counterpart European Patent EP 2010714 .........12
`Claim Construction..............................................................................13
`1.
`“Milling Operation” ..................................................................14
`2.
`“Selected Subset” ......................................................................16
`LEVEL OF ORDINARY SKILL IN THE ART ................................ 17
`Caterpillar fails to focus on the appropriate technical field in
`defining the level of ordinary skill in “the art.” ..................................17
`Dr. Bevly’s testimony should be given little, if any, weight because
`he is unfamiliar with “the art” and challenges in “the art” in this
`proceeding. ..........................................................................................19
`SUMMARIES OF THE APPLIED REFERENCES .......................... 23
`A. U.S. Patent Publication No. 2002/0047301 to Davis ..........................23
`U.S. Patent Publication No. 2002/0154948 to Brabec et al. ...............25
`B.
`U.S. Patent No. 6,286,606 to Krieg et al. ............................................26
`C.
`THE CHALLENGED CLAIMS ARE PATENTABLE OVER THE
`APPLIED REFERENCES .................................................................. 27
`Brabec is not analogous art to the ’395 patent and therefore cannot
`be applied in an obviousness combination. .........................................27
`1.
`Legal standards for analogous art .............................................28
`2.
`The ’395 patent’s field of endeavor is road milling
`machines; Brabec’s is not. ........................................................30
`Brabec is not reasonably pertinent to the particular problem
`solved by the inventors of the ’395 patent. ...............................32
`A POSA would not have been motivated to combine Davis and
`Brabec. .................................................................................................37
`
`A.
`
`B.
`
`3.
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`1.
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`2.
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`3.
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`b)
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`b)
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
`Caterpillar and Dr. Bevly based their obviousness analysis
`on the fundamentally erroneous interpretation that Davis
`uses only two of its three sensors for controlling the milling
`drum depth and slope. ...............................................................38
`a)
`A POSA would have understood that Davis teaches
`using all three sensors for controlling the milling
`drum depth and slope. .....................................................38
`Dr. Bevly’s testimony belies Caterpillar’s
`interpretation of Davis. ...................................................42
`Caterpillar’s purported rationale for combining Davis and
`Brabec is illusory and therefore cannot establish a prima
`facie case of obviousness. .........................................................44
`a)
`Caterpillar’s proposed rationale for combining Davis
`and Brabec hinges on its erroneous interpretation of
`Davis. ..............................................................................45
`Brabec’s approach of automatic sensor switching
`when a sensor is “unavailable” is not acceptable for
`road milling machine applications. .................................46
`Dr. Bevly used impermissible hindsight in analyzing the
`’395 patent claims. ....................................................................50
`The combination of Davis and Brabec fails to disclose every
`element of claims 1 and 11. .................................................................51
`1.
`Davis and Brabec fail to disclose a “first selected subset”
`and a “second selected subset.” ................................................51
`a)
`Caterpillar fails to meet their burden to show that the
`elements of claims 1 and 11 are found in the prior art. ..51
`The prior art does not render claims 1 and 11
`unpatentable. ...................................................................52
`Davis and Brabec fail to disclose selection of “a second
`selected subset during milling operation.” ................................54
`The combination of Davis and Brabec fails to disclose the elements
`of dependent claims 5 and 15. .............................................................55
`1.
`Davis and Brabec do not disclose or render obvious the
`“manual” technical elements of claims 5 and 15. .....................55
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`C.
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`D.
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`b)
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`2.
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`2.
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`Caterpillar’s arguments regarding claims 5 and 15 are
`legally flawed for failing to provide any rationale for
`combining purported manual and automatic “embodiments”
`in Brabec and because Brabec teaches away from such
`modification. .............................................................................57
`Claims 3, 5-8, 10, 13, 15-17, 19, 20, 22, 24, 26 and 27 are
`patentable over the combination of Davis and Brabec. ......................61
`The Board correctly found in the Institution Decision that the
`combination of Davis and Krieg fails to disclose the claimed
`switchover occurs “during milling operation.” ...................................62
`CONCLUSION ................................................................................... 66
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`E.
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`F.
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`VI.
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`UPDATED EXHIBIT LIST
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`Case IPR2018-01091
`U.S. Patent No. 8,308,395
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`Exhibit No. Description
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`2001
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`2002
`2003
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`2004
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`2005
`2006
`2007
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`2008
`2009
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`2010
`2011
`2012
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`2013
`2014
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`2015
`2016
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`Pre-Institution at PTAB: Obtaining a Denial Is a Patent
`Owner Win - Part 2- Substantive Bases of Challenge -
`Finnegan
`To Do List-Filing an IPR-Finnegan
`PTAB Post SAS-What We Know and What Questions
`Remain-Finnegan
`Declaration of Ralph V. Wilhelm, Ph.D. in Support of Patent
`Owner’s Response and Contingent Motion to Amend
`Curriculum Vitae of Ralph V. Wilhelm, Ph.D.
`Deposition Transcript of David M. Bevly, Ph.D., February 20, 2019
`“Basic Asphalt Recycling Manual,” Asphalt Recycling and
`Reclaiming Association (ARRA), 2001
`Declaration of Jan Schmidt
`Wirtgen Manual For The Application Of Cold Milling Machines,
`January 2004
`U.S. Patent No. 8,308,395 As-Filed Application (13/098,798)
`Webster’s New World College Dictionary (Fourth Edition), 2007
`German Patent Application Publication No. DE 102006020293.7
`with English-language Translation attached, filed April 12, 2007
`U.S. Patent No. 7,946,788 As-Filed Application (12/225,792)
`Technical Expert Brief with English-language Translation attached,
`January 17, 2019
`Wirtgen Cold Milling Machine W 220i, 2016
`Prosecution History of U.S. Patent No. 7,946,788
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`I.
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`INTRODUCTION
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`The ’395 patent claims protect inventions targeting problems previously
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`unsolved in the road milling machine industry. For application-related reasons in
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`this field, there is a need to frequently change between different sensors on a road
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`milling machine that are used to control the depth and slope of a milling drum.
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`Operators of the machine must analyze conditions and obstacles associated with a
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`road surface and select an appropriate combination of sensors for depth and/or
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`slope control.
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`Prior to the ’395 patent, road milling machine sensor switching involved
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`physical and electrical disconnection and connection of sensors from a controller,
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`which required stopping the milling operation to minimize disruption of the milling
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`surface during switchover. This time loss was highly undesirable for operators. The
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`’395 patent solves this problem with devices and methods allowing sensor
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`selection and switching to occur during the milling operation without interrupting
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`the milling operation or adversely affecting the milled surface.
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`Caterpillar’s Petition challenging certain claims of the ’395 patent is riddled
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`with technical and legal flaws, any and all of which are fatal to Caterpillar’s
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`allegation that the challenged claims would have been obvious to a skilled artisan
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`at the time of the ’395 patent inventions.
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`First, in Ground 1, the Brabec reference is not analogous art to the ’395
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`patent. Brabec is not from the ’395 patent’s field of endeavor (road milling
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`machines), and it is not reasonably pertinent to the problem solved by the ’395
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`patent’s inventors. Therefore, Brabec is not prior art and cannot be applied in an
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`obviousness combination.
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`Second, Caterpillar’s arguments for all Grounds are fundamentally flawed
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`because they are premised on a critical misinterpretation of the Davis reference.
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`This misinterpretation holds that Davis uses only two of its three sensors for
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`controlling milling depth and slope. But a skilled artisan would have understood
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`that Davis teaches using all three sensors for control. Accordingly, Caterpillar’s
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`necessary basis for its obviousness rationale–that Davis has an “unused” sensor–is
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`destroyed. Even were that not the case, for Ground 1, the automatic sensor
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`switching in Brabec that Caterpillar proposed adding to Davis would be
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`unacceptable if introduced for road milling machine applications.
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`A third category of flaws is that the combination of Davis and Brabec in
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`Ground 1 fails to disclose certain claimed elements. Independent claims 1 and 11
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`recite a “system [ ] configured to switch over from control based upon a first
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`selected subset of the plurality of selectable sensors to control based upon a second
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`selected subset during milling operation[s].” Caterpillar ignores the terms
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`“selected” and “subset” in its analysis, and the references fail to teach that the
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`second selected subset is selected “during milling operation[s].”
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`Further, dependent claims 5 and 15 recite “the controller and switchover
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`system includes a manually operable switchover device” and that “a human
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`operator may manually pre-select the replacement sensor and manually pre-set the
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`operating parameter of the replacement sensor prior to effecting the switchover.”
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`In Ground 1, Caterpillar inappropriately relies on Brabec as allegedly disclosing
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`these features. But Brabec is inapposite, being specifically directed to “automatic”
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`sensor switching, and expressly stating that the purpose of its purported invention
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`was “to eliminate the need for manual operator intervention” (EX1005, ¶2,
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`(emphasis added)) such that “[t]he present invention replaces manual intervention
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`by the operator with a new automatic method of intervention by the controller.”
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`(Id., ¶11 (emphasis added).)
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`Finally, Caterpillar’s Ground 2 based on Davis and Krieg also fails. As the
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`Board correctly found in its Institution Decision, the combination of Davis and
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`Krieg fails to teach, as claimed, that the sensor switching occurs “during the
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`milling operation.”
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`II. OVERVIEW OF THE ’395 PATENT
`U.S. Patent No. 8,308,395 (“the ’395 patent) is titled “Road construction
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`machine, leveling device, as well as method for controlling the milling depth or
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`milling slope in a road construction machine.” The ’395 patent issued from U.S.
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`Application No. 13/098,798, filed on May 2, 2011, and is a continuation of U.S.
`
`Patent No. 7,946,788, which ultimately claims priority to German Patent
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`Application No. DE 102006020293, filed on April 27, 2006.
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`Caterpillar challenges claims 1, 3, 5-8, 10, 11, 13, 15-17, 19, 20, 22, 24, 26,
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`and 27 of the ’395 patent (“the challenged claims”), of which claims 1, 11, 20, 26,
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`and 27 are independent.
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`A. Technology Background
`The ’395 patent relates to a road milling machine having a levelling device
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`for controlling the milling depth or milling slope with respect to a road surface, in
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`which it is possible to change the sensors upon which control is based without
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`interruption to the act of milling. (EX1001, 1:54-58; EX2004, ¶46.)
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`Road milling machines include a milling drum having an array of cutting
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`tools to work a ground surface. (EX2008, ¶¶11-16; EX2004, ¶¶47-48; EX2015, 1.)
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`The position of the milling drum is adjusted by adjusting the elevations of lifting
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`columns associated with the frame of the road milling machine. (Id.) As the
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`rotating milling drum is lowered into a ground surface at a given milling depth, the
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`cutting tools mill away layers of the ground surface. (Id.) A conveyor typically
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`deposits the milled material into a vehicle, such as a dump truck, to transport the
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`milled material away from a job site, as illustrated below. (Id.)
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`(EX2009, 16.)
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`
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`As of the ’395 patent’s April 27, 2006 priority date, certain road milling
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`machines included a combination of sensors and control systems to regulate an
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`orientation of the machine to provide an even milled surface. (EX1001, 1:11-17;
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`EX2008, ¶¶19-20; EX2004, ¶49.) Chief among these sensors were depth sensors
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`and slope sensors to “very precisely” determine the position and orientation of the
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`machine. (EX1001, 1:14-24; EX2008, ¶20; EX2004, ¶49 (citing EX2007, 120).)
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`Prior art milling depth control systems typically included a controller to which
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`sensors were manually connected and disconnected via plug-in connectors.
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`(EX1001, 1:28-31; EX2008, ¶¶26-27.) Conventionally, “either two height sensors
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`are provided, or one height sensor in combination with one slope sensor.” (Id.,
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`1:31-33.)
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`The ’395 patent describes that in the art of road milling machines, it is
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`necessary to frequently change between many different sensors “for application-
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`related reasons.” (EX1001, 1:34-36; EX2004, ¶¶49-58.) These include, for
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`example, when a side plate will be riding on what is known as a “soft shoulder,”
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`raised above a curb or manhole cover, or in a pothole. (EX2008, ¶23; EX2004,
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`¶59; see also, e.g. EX2004, ¶¶60-64.) When an operator visually identifies such
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`situations, he/she may desire to preemptively switch the sensors used for
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`controlling the milling parameters. (EX2008, ¶23; EX2004, ¶58.) However, the
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`’395 patent describes that these changes could not be made on conventional road
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`milling machines “without an interruption of the milling operation and without
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`negative influences on the work result.” (EX1001, 1:36-35.)
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`B. Summary of the ’395 Patent
`The inventors of the ’395 patent sought to overcome these disadvantages by
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`enabling an operator to select and change sensors at the push of a button during the
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`milling operation without any interruption to the act of milling. (EX1001, 1:54-58,
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`2:19-23; EX2004, ¶¶65, 69.) To do so, an indication and setting device enables the
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`operator to select a first subset of sensors that are initially used as a basis for
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`control. (EX1001, 4:6-19; EX2004, ¶65.) Selectable types of sensors include “a
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`wire-rope sensor, a slope sensor, an ultrasonic sensor, a multiplex sensor, a total
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`station, as well as a laser for pre-determining the reference surface.” (Id., 4:60-67.)
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`Figure 2 illustrates an example with “the connection of sensors A, B, C to
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`the leveling device 4 with two controllers 6a, 6c, where the leveling device is
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`provided with an indication and setting device 2 with three indication and setting
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`units 2a, 2b, 2c.” (Id., 2:44-47; EX2004, ¶66.)
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`
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`(EX1001, Fig. 2.)
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`Further, Figure 3 “shows an embodiment of the indication and setting
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`device 2, wherein setting buttons 16 (up and down) for the setting of set values, as
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`well as setting buttons 18 (up and down) for the adjustment of measured actual
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`values are present for each indication and setting unit 2a, 2b, 2c.” (Id., 4:48-52.)
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`Buttons (labeled A and S) are “provided for the automatic mode and for the setting
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`mode to set the controller parameters.” (Id., 5:1-3; EX2004, ¶67.)
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`(EX1001, Fig. 3.)
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`
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`When the operator identifies conditions during the act of milling that require
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`changing from one of the first subset of sensors to another selectable sensor, the
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`indication and setting device enables the operator to pre-select a second subset of
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`sensors that will be used for control after a switchover. (Id., 4:23-34; EX2004,
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`¶68.) Once the second subset of sensors is selected, the operator can effect
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`switchover through manual actuation of a corresponding switchover button (e.g.,
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`10a or 10b). (Id., 4:28-34, 6:1-8, Fig. 3; EX2004, ¶¶68, 70.)
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`These features are important in view of the particular problems addressed by
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`the inventors, which are specific to road milling machines. Road milling operations
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`are very expensive and performed to tight specifications, in view of time allocated
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`for the job and the precision of the cut depth and slope of the finished road surface.
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`(EX2008, ¶¶9-10; EX2004, ¶69.) Operators must visually analyze conditions and
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`obstacles associated with a road surface to be milled and select an appropriate
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`combination of sensors for grade and/or slope control. (EX2008, ¶21; EX2004,
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`¶¶69, 71.) Operator involvement in sensor pre-selection and switchover activation
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`is therefore critical so that “switchover of the sensors is possible at the push of a
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`button without any time loss and without an interruption of the milling operation.”
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`(EX1001, 2:19-23.)
`
`C. Summary of the ’395 Patent’s Prosecution History
`The ’395 patent issued from U.S. Application No. 13/098,798, filed on May
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`2, 2011, with claims 1-27. (EX1008, 181-220.) None of the independent claims
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`were amended during prosecution of the ’798 Application. (See id., 16-26; Ex2004,
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`¶72.)
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`In a first Office Action, the Examiner indicated that claims 1-25 were
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`allowable over the prior art (though subject to a statutory double patenting
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`rejection), while claims 26-27 were rejected as allegedly anticipated by European
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`Patent No. EP1154075 (“EP-Davis”), the European counterpart to the Davis
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`reference applied in both Grounds of unpatentability in this proceeding. (EX1008,
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`111-15; EX2004, ¶73.) In response, Wirtgen commented:
`
`Both claims 26 and 27 deal with switching over control of
`either the milling depth of the drum or the slope of the drum,
`respectively, during the milling operation without interrupting the
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`milling operation and without disrupting the milled surface at the time
`of switching over.
`The EP reference does not deal with the changing of the basis
`of control during the milling operation at all. The only thing that the
`EP reference teaches is that before starting the milling operation, the
`operator can choose to control right and left side milling depth and
`slope by selecting to control based on sensors for any two of those
`three parameters. But the EP reference does not change its basis of
`control during the milling operation.
`Accordingly it is respectfully submitted that claims 26 and 27
`should be allowed over the cited reference.
`
`(EX1008, 104 (underline emphasis original, italic emphasis added).)
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`It is apparent that the thrust of Wirtgen’s argument was based on the fact
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`that EP-Davis (and, therefore, Davis) does not disclose changing its basis for
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`control during the milling operation. (See EX2004, ¶¶74-77.) As that argument
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`undermines Caterpillar’s obviousness combinations here, they ignore it.
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`Caterpillar, however, latches on to the characterization of EP-Davis (and,
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`therefore, Davis) as teaching “selecting to control based on sensors for any two of
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`those three parameters.” (See Petition, 6.) Indeed, Caterpillar’s obviousness
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`argument hinges on the assumption that Davis operates by only using two out of
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`three sensors. (See Petition, 24-31.)
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`But Davis must be read for what it actually teaches a skilled artisan. And as
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`Dr. Wilhelm explains, while Davis discloses that the operator can “preset” target
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`values for two of the three sensor parameters, nowhere does Davis teach that the
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`operator only selects two sensors as a basis for control. (EX2004, ¶76.) Setting
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`target values as described in Davis (and EP-Davis) and selecting for sensor control
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`are distinct concepts which may have been conflated in the prosecution statement
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`cited by Caterpillar. (EX2004, ¶75.) In fact, a skilled artisan reading Davis in its
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`entirety would have understood that Davis uses all three sensors–not just two–to
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`control the depth and slope of its cutting drum. (Id., ¶¶75, 99-104.)
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`Moreover, Wirtgen’s comments did not persuade the Examiner to allow the
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`contested claims; the Examiner maintained the rejection in the next Office action.
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`(EX1008, 91-94; EX2004, ¶78.) Indeed, Caterpillar acknowledges the comment on
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`EP-Davis is not what distinguished the ’395 patent for patentability (See Petition,
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`24-25.)
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`After an Examiner interview, the Examiner withdrew the rejection based on
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`EP-Davis and made a new rejection of claims 26 and 27 as allegedly being obvious
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`over a combination of different references. (EX1008, 70-71, 78; EX2004, ¶79.) In
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`response, Wirtgen argued that the references did not disclose that switching over
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`control from one sensor to another could occur “without disrupting the milled
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`surface at the time of switching over.” (EX1008, 63-64, EX2004, ¶80-81.) The
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`Examiner allowed the application after this argument. (Id., 55, 59.)
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`D. Italian Litigation of Counterpart European Patent EP 2010714
`Wirtgen notes that the ’395 patent’s counterpart European Patent (“the EP
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`Counterpart”) is currently being litigated against Caterpillar in Italy. In that forum,
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`Caterpillar is relying on EP-Davis, Brabec, and Krieg in an attempt to invalidate
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`the EP Counterpart, making substantially the same arguments it makes here. (See
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`EX2014, 38-43.)
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`Wirtgen understands that the claims of the EP Counterpart and the ’395
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`patent are not identical and that the legal standards between the two forums may
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`not be precisely the same. However the following findings in the Italian court-
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`appointed technical expert’s final report (EX2014) are highly relevant to issues in
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`this proceeding, and are consistent with Dr. Wilhelm’s opinions (see EX2004,
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`¶82):1
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`1. The court-appointed expert concluded that Davis teaches using all
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`three sensors to control the depth and slope of the milling drum.
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`(EX2014, 39-40; see infra Section V.B.1.)
`
`
`1
`The Italian court-appointed neutral expert, Paolo Piovesana, was tasked with
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`analyzing the prior art and case documents, including six technical briefs
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`submitted by the parties, and submitting an opinion on the validity of the EP
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`Counterpart. (EX2014, 1.)
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`2. The court-appointed expert also concluded that the “problem” solved
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`by the EP Counterpart is the need to frequently change between
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`different sensors for application-related reasons, without interrupting
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`the milling operation and without negatively influencing the work
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`result. (EX2014, 30-31; see infra Section V.A.)
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`3. The court-appointed expert concluded that a skilled artisan would not
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`have combined Brabec or Krieg with Davis because they are not from
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`the same field and address different problems; and even if combined,
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`they do not teach every claim element. (EX2014, 41-43, 86-88; see
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`infra Sections V.B.1-3.)
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`E. Claim Construction
`Under 37 C.F.R. §42.100(b), the challenged claims must be given their
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`broadest reasonable interpretation in light of the ’395 patent specification.2
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142-2146 (2016). Terms in
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`need of construction are discussed below.
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`2 The Petition was filed on May 28, 2018, before the November 13, 2018 effective
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`date changing the claim construction standard from the broadest reasonable
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`interpretation to the Phillips standard.
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`1. “Milling Operation”
`In the Institution Decision, the Board adopted Wirtgen’s proposed
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`construction of the term “milling operation,” recited in each independent claim, to
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`mean “the act of milling.” (Institution Decision, 8). The Board’s finding was
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`legally and factually correct, and Wirtgen maintains that “milling operation”
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`should be construed as “the act of milling.” (EX2004, ¶¶83-84.)
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`The broadest reasonable interpretation of “milling operation” in the context
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`of the ’395 patent is its plain and ordinary meaning: “the act of milling.” (EX2004,
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`¶85.) Nothing in the term “milling operation” as used in the claims or as discussed
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`in the specification suggests that it refers merely to operating a milling machine.
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`(Id.)
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`The specification discusses disadvantages of changing the current sensor
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`during the act of milling that support Wirtgen’s construction. Changing the sensors
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`in prior-art machines necessitated stopping the act of milling. (EX1001, 1:34-53;
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`EX2008, ¶28; EX2004, ¶86.) The specification explains:
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`It is unfavorable in the state of the art that the frequent change
`between
`the many different sensors, which
`is necessary for
`application-related reasons, is not possible without an interruption of
`the milling operation….If the road milling machine continued milling
`during changing of the sensor[s], faults in the work result could occur
`because no control is effected during that time. The machine therefore
`needs to be stopped for a change of the sensor, which leads to a
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`significant time loss. An adverse effect on the work result ensues even
`if the road milling machine is stopped during change of the sensor
`because the milling drum cuts clear when standing. This is an
`unwelcome effect, in particular during fine milling.
`(EX1001, 1:34-53 (emphases added).)
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`Further, the specification and claims consistently discuss switching sensors
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`“without interruption of the milling operation and without any erratic alteration of
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`the current adjustment value for the setting of the milling depth and/or for the
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`setting of the slope of the milling drum.” (Id., 2:7-14 (emphasis added).) Erratic
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`alteration of adjustment values is only a concern while actually milling to achieve a
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`desired pavement profile, not, e.g., while turning the milling machine around or
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`“between passes.” (EX2004, ¶¶87-88.) For example, the specification describes
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`effecting sensor switchover “during the milling operation without any repercussion
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`on the work result,” such as an adverse effect on “the evenness of the milled road
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`surface.” (EX1001, 2:24-30, 2:37-42.) There would be no repercussion on the work
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`result unless the erratic alteration occurred during the act of milling. (EX2004,
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`¶88.)
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`Accordingly, “milling operation” should be construed as “the act of
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`milling.” (Id.)
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`2. “Selected Subset”
`Claims 1 and 11 recite the terms “selected subset,” “first selected subset,”
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`and “second selected subset” of the plurality of selectable sensors. Patent claims
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`are construed to give effect to all of the terms in the claim. Bicon, Inc. v.
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`Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Thus, the adjective “selected”
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`must be construed to modify the term “subset” of sensors.
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`The word “subset” necessarily acts to define a smaller group of sensors of
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`the plurality of sensors. So the word “selected” must mean more than a defined
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`grouping, in order to give meaning to both “selected” and “subset.” (EX2004,
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`¶¶89-90.) The word “selected” is defined as “chosen in preference to another or
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`others” or “picked out, esp. for excellence or some special quality.” (EX2011, 3.)
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`Thus, a skilled artisan would understand that a “selected subset” of sensors is a
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`subset of sensors purposefully chosen for preference or special quality over other
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`available sensors. (EX2004, ¶90.)
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`The ’395 patent specification supports this interpretation, disclosing that the
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`operator can effect “switching over from the current sensor to the pre-selected
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`sensor…during the milling operation,” which connotes purposeful selection of the
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`pre-selected replacement sensor. (EX1001, 2:27-30; EX2004, ¶91.) Claims 1 and
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`11 reinforce this concept by using the term “selected subset” in the context of “a
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`selected subset of the plurality of selectable sensors.” Thus, the “selected subset”
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`must be a subset of the plurality of selectable sensors chosen or picked out from
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`the larger group of selectable sensors. (EX2004, ¶91.) And because the term
`
`“selected” modifies the word “subset,” the only reasonable interpretation of the
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`term is that each component of the subset is “selected.” (Id.)
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`Finally, as noted above, because machine operators in this technical field
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`visually analyze conditions and obstacles associated with a road surface to be
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`milled and select an approp