Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 1 of 34 PageID #: 34237
`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 1 of 34 PagelD #: 34237
`
`EXHIBIT 31
`EXHIBIT 31
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 2 of 34 PageID #: 34238
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`)
`
`WIRTGEN AMERICA, INC.
`)
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`v. )
`
`
`
`
`
`
`)
`CATERPILLAR INC.,
`
`
`)
`
`
`
`
`
`
`)
`Defendant.
`
`
`
`)
`________________________________
`)
`
`C.A. No. 17-770-JDW
`
`OPENING EXPERT REPORT OF DR. ANDREW W. SMITH, P.E.
`
`
`
`
`
`
`2111403.002 - 0981
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 3 of 34 PageID #: 34239
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`19[c] a leveling system configured to control the at least one position
`characteristic, the leveling system including: a plurality of selectable
`sensors, each sensor configured to sense a current actual value of an
`operating parameter corresponding to at least one of the milling depth
`of the drum and the slope of the drum;
`
`19[d] a plurality of indication and setting devices, each of the
`indication and setting devices being associatable with at least one of
`the plurality of selectable sensors, each indication and setting device
`being operable to indicate the current actual value of and to set a set
`value for each operating parameter sensed by its associated sensor or
`sensors;
`
`19[e] a controller and switchover system configured to control
`the at least one position characteristic conditioned on set value or
`values and sensed current actual value or values of the operating
`parameter or parameters sensed by a selected subset of the plurality
`of selectable sensors by returning at least one adjustment value to
`adjust the at least one position characteristic so that the sensed
`current actual value or values of the operating parameter or
`parameters approach the set value or values for the selected subset of
`the plurality of selectable sensors;
`
`19[f] the controller and switchover system being configured to switch
`over from control based upon a first selected subset of the plurality of
`selectable sensors to control based upon a second selected subset
`during milling operation without interruption of the milling
`operation, the second selected subset exchanging at least one
`replacement sensor not in the first subset for at least one replaced
`sensor that was in the first subset; and
`
`19[g] wherein the controller and switchover system is operable to
`change at least one of the set value of the operating parameter of the
`replacement sensor and the sensed current actual value of the
`operating parameter of the replacement sensor such that the
`adjustment value is unchanged at the time of switch over.
`
`Claim 21: The road construction machine of claim 19, wherein: the controller
`and switchover system is operable to set the set value for the operating
`parameter of the replacement sensor to the sensed current actual
`value of the operating parameter of the replacement sensor.
`
`38.
`
`The ’788 Family Patents share a specification, title, and an inventor list with U.S.
`
`Patent No 8,308,395 (herein, “the ’395 Patent). The claims of the ’395 Patent, many of
`
`2111403.002 - 0981
`
`17
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 4 of 34 PageID #: 34240
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`
`
`
`
`which are substantially similar to certain Asserted Claims of the ’788 Family Patents,
`
`were the subject of a successful IPR challenge (IPR2018-01091) wherein the PTAB
`
`found many of the claims of the ’395 Patent to be invalid based on combinations of prior
`
`art, some of which are discussed in the present report.18 Throughout this report, I will
`
`make reference to the findings of the PTAB in IPR2018-01091 as they are relevant to the
`
`present analysis.
`
`B. The “Parallel to Surface” Patent (the ’972 Patent):
`
`39.
`
`U.S. Patent No. 8,424,972, titled “Road Milling Machine and Method for
`
`Positioning the Machine Frame Parallel to the Ground,” was issued on April 23, 2013, to
`
`Christian Berning and Dieter Simons. I understand that Wirtgen America refers to the
`
`’972 Patent as the “Parallel to Surface” patent; I will refer to this patent as “the ’972
`
`Patent” herein. The ’972 Patent claims priority to German patent application
`
`202006019509U filed on December 22, 2006, and further claims priority to a PCT
`
`application filed December 21, 2007. I have considered both dates in my analysis of the
`
`’972 Patent.
`
`40.
`
`The ’972 Patent identifies that road milling machines traditionally have problems
`
`with inaccurate parallel orientation of the machine frame to the ground surface 8,
`
`resulting in inadequate stripping and difficulties in grade and slope control.19 Thus, the
`
`patent generally discloses the use of a control means 23 to automatically adjust the lifting
`
`condition of the front and/or rear lifting columns 12, 13.20 By extending or retracting
`
`
`
`18 EXPONENT_0002668.
`19 ’972 Patent, 1:33-61.
`20 ’972 Patent, 2:1-6.
`
`2111403.002 - 0981
`
`18
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 5 of 34 PageID #: 34241
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`III. Legal Standards
`
`
`
`
`
`A. Priority Date
`52.
`It is my understanding that, when interpreting the claims of a patent, I must do so
`
`based on the perspective of one of ordinary skill in the art at the relevant priority date.
`
`My understanding is that the effective filing date of the ’788 Family Patents is either the
`
`German priority date (April 27, 2006) or the PCT application date (April 12, 2007). I
`
`have considered both dates. I further understand that the effective filing date of the
`
`Parallel to Surface patent is either the German priority date (December 22, 2006) or the
`
`PCT application date (December 21, 2007). I have considered both dates.
`
`53.
`
`I understand that there are different types of “prior art” including (a) the invention
`
`was known or used by others in this country, or patented or described in a printed
`
`publication in this or a foreign country, before the earliest filing date (the “effective filing
`
`date”) of the patent or (b) the invention was patented or described in a printed publication
`
`in this or a foreign country or in public use or on sale in this country, more than one year
`
`prior to the date of the application for patent in the United States.
`B. Person Having Ordinary Skill in the Art (“PHOSITA”)
`54.
`I understand that, in general, patents are understood and patent law principles are
`
`applied from the perspective of a PHOSITA at the time of the invention claimed in the
`
`particular patent.
`
`The ’788 Family Patents
`
`55.
`
`For the ’788 Family Patents, a PHOSITA would have had at least a bachelor’s
`
`degree in mechanical or electrical engineering or a related discipline, as well as at least
`
`two years of experience in sensing and control systems. A person with additional
`
`2111403.002 - 0981
`
`25
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 6 of 34 PageID #: 34242
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`education but less experience (and vice versa) could also be a PHOSITA. Because the
`
`’788 Family Patents principally teach to the field of using multiple, redundant sensors for
`
`determining and controlling orientation and position, a PHOSITA would not require
`
`specific experience with the design of road conditioning equipment. Indeed, in the
`
`proceedings of IPR2018-01091, the PTAB found that for the ’395 Patent (sharing a
`
`specification with the ’788 Family Patents) a PHOSITA would not be required to have
`
`“direct experience with road milling machines and milling operations.”49
`
`56.
`
`I am a PHOSITA for the ’788 Family Patents because I have held a B.A. degree
`
`in astrophysics since 2001 (including laboratory coursework using sensor and control
`
`systems for detection and control), have completed an internship at UC Berkeley Space
`
`Science laboratory involving the performance assessment of, and analysis of the data
`
`from, complex sensor packages (2000-2001); I have completed a Ph.D. in experimental
`
`astrophysics (2005-2008) involving the use, development, and commissioning of sensor
`
`packages and their related control systems. Furthermore, since completing my Ph.D., I
`
`have accrued an additional 15 years of experience in the design and performance of
`
`sensor and control systems (including my research and faculty appointments at Argonne
`
`National Laboratory and NASA’s Goddard Space Flight Center as described above),
`
`including over 6 years of experience in investigating the mechanical design and
`
`performance of heavy machinery, including their control systems.
`
`57.
`
`Additionally, while a PHOSITA would not be required to have direct experience
`
`with road milling machines and milling operations, I also have this experience as I have
`
`undertook significant research in the areas of road milling equipment and operation
`
`
`49 EXPONENT_0002676 – EXPONENT_0002677.
`
`2111403.002 - 0981
`
`26
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 7 of 34 PageID #: 34243
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`during the course of this investigation including, but not limited to, the review of a
`
`multitude of prior art references (listed in Appendix C) available as of April 2006;
`
`documents which describe the state of the field of cold milling machinery prior to April
`
`27, 2006;50 as well as observing a variety of cold planing machinery during four separate
`
`
`
`
`inspections.51
`
`The ’972 Patent
`
`58.
`
`For the ’972 Patent, a PHOSITA would have had at least a bachelor’s degree in
`
`mechanical engineering or a related discipline, and at least two years of experience in the
`
`installation and use of sensors in rugged environments, including (but not limited to)
`
`those used for control of heavy machinery. A person with additional education but less
`
`experience (and vice versa) could also be a PHOSITA.
`
`59.
`
`I am a PHOSITA for the ’972 patent because I have held a B.A. degree in
`
`astrophysics since 2001 (including laboratory coursework using sensors in real-world
`
`environments), have completed an internship at UC Berkeley Space Science laboratory
`
`involving the performance assessment of, and analysis of the data from, complex sensor
`
`packages (2000-2001) deployed in space; I have completed a Ph.D. in experimental
`
`astrophysics (2005-2008) involving the use, development, and commissioning of sensor
`
`packages in scientific equipment exposed to the elements (including deploying sensors
`
`exposed to dust, wind, and water as well as the use of position control systems of large
`
`mechanical structures). Furthermore, since completing my Ph.D., I have accrued an
`
`
`50 Including EXPONENT_0001684-EXPONENT_0001732, EXPONENT_0003256-EXPONENT_0003337, and
`EXPONENT_0002648-EXPONENT_0002665.
`51 In IPR2018-01091, Patent Owner for the ’395 Patent argued that their retained technical expert held the requisite
`specific direct experience with cold planing technology and operations due to their “additional self-education” and
`participation in inspections and operations of Wirtgen road milling machines; see EXPONENT_0002770 –
`EXPONENT_0002771.
`
`2111403.002 - 0981
`
`27
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 8 of 34 PageID #: 34244
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`V. Claims Within the ’788 Family Patents Reciting an “Indication
`and Setting Device,” a “Switchover Device/System,” and a
`“Controller” Lack Adequate Written Description and
`Enablement
`133. As stated above, I understand that a patent’s specification must describe the
`
`claimed invention in such full, clear, concise, and exact terms as to enable one of
`
`ordinary skill in the art to make and use the full scope of the claimed invention. Further, I
`
`understand that a claimed invention is not enabled and, therefore, unpatentable if the
`
`specification does not teach those of ordinary skill in the art how to make and use the
`
`invention as it is claimed, without undue experimentation.
`
`134. Further, I understand that a claimed invention that is not expressly described fails
`
`to satisfy the written description requirement, even if it is an obvious variant of a
`
`disclosed embodiment. In addition, to satisfy the written description requirement a person
`
`of ordinary skill in the art, reading the patent application as originally filed, would
`
`recognize that the patent application described the invention as claimed; additionally, the
`
`specification must demonstrate that the inventor was in possession of the full scope of the
`
`invention as claimed.
`
`135. With these understandings in mind, it is my opinion that, as they appear in the
`
`various claims of the ’788 Family Patents, the claimed inventions which use the terms
`
`“indication and setting devices,” “switchover device/system,” and “controller” lack
`
`sufficient written description and enablement. I understand that the Court has given
`
`definite constructions for each of these terms212 which I apply in my analysis. However,
`
`despite the definite constructions given to these individual terms by the Court, the
`
`212 Dkts. 168, 182.
`
`2111403.002 - 0981
`
`
`
`68
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 9 of 34 PageID #: 34245
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`specification of the ’788 Family Patents still fails to enable one of ordinary skill in the art
`
`to recognize the invention as claimed (incorporating the Court’s constructions) from the
`
`specification or to make and use the full scope of the aspects of the claimed invention
`
`which use the above claim terms.
`
`136. Even with the Court’s constructions for these terms and to the extent that the
`
`specification identifies specific roles within the invention for these terms, these roles are
`
`generally in contradiction with the claims of the ’788 Family Patents and would leave a
`
`PHOSITA in a state of confusion as to how to practice the claimed inventions of the ’788
`
`Family Patents.
`
`
`
`
`
`
`
`2111403.002 - 0981
`
`69
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 10 of 34 PageID #: 34246
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`
`
`The Claim Terms as Described in the Specification of the ’788 Family Patents
`
`137. With regard to the claim term “indication and setting devices,” the Court has
`provided a construction for this term of “operating parameter input and display
`devices.”213 The specification teaches (emphasis added) “the leveling device 4 is provided
`
`with an indication and setting device which is divided into three nearly identical
`
`indication and setting units 2a, 2b, 2c. The indication and setting device 2 serves the
`
`purpose of setting operating parameters for the sensors A, B, C”214 and (emphasis
`
`added) “the leveling device is provided with an indication and setting device which is
`
`capable of indicating and altering the data of the current sensor and the data of the
`
`pre-selected sensor.”215 Accordingly, the specification of the ’788 Family Patents (in
`
`combination with the Court’s construction) indisputably teaches that the indication and
`
`setting device is an operating parameter input and display device which both displays and
`
`sets operating parameters (e.g., setpoints for grade or slope) as well as being capable of
`
`altering the displayed data of a sensor to be switched into operation in a sensor
`
`switchover operation.
`
`138. Moving to “switchover device,” the parties in this matter have jointly agreed (and
`
`the Court has accepted) that the term “switchover device” shall be construed as
`
`“controller input and output switch.”216 I apply this construction in the foregoing analysis.
`
`While this construction specifies what the switchover device “is,” it does not specify
`
`what the switchover device specifically “does.” The specification of the Sensor Switching
`
`provides some guidance in this respect “By means of the switchover device, switching
`
`
`
`213 Dkt. 168, p. 1.
`214 ’788 Patent, 4:13-17.
`215 ’788 Patent, 2:24-27.
`216 Dkt. 182.
`
`2111403.002 - 0981
`
`70
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 11 of 34 PageID #: 34247
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`over from the current sensor to the pre-selected sensor can be effected during the milling
`
`operation without any repercussion on the work result.”217
`
`139. Accordingly, taken in conjunction with the agreed-upon construction, a
`
`PHOSITA would understand that a “switchover device” is a controller input and output
`
`switch that operates in conjunction with the indication and setting device to facilitate a
`
`sensor switchover procedure; within this procedure the switchover device specifically
`
`acts to pre-select the replacement sensor and provide input to the controller such that the
`
`milling operation is not affected during the change of this sensor input to the controller.
`
`Indeed, the specification further teaches the role of the switchover device (distinct from
`
`the indication and setting device operation, emphasis added):
`
`
`
`“The leveling device is provided with a device for the switchover of sensors
`which, upon activation of a sensor switchover command, effects switchover of
`the leveling device from the at least one current sensor to at least one pre-
`selected other sensor without interruption of the milling operation and
`without any erratic alteration of the current adjustment value for the setting
`of the milling depth and/or for the setting of the slope of the milling drum.
`The switchover device…”218
`
`140. The specification also teaches that “The switchover device, with the indication
`
`and setting device, enables a pre-selection of the other sensor and the pre-setting of
`
`operating parameters (set values and actual values) of the other pre-selected sensor.”219
`
`However, given that there is no disclosure about the switchover device providing the
`
`functionality of entering set points for operation parameters, a PHOSITA would interpret
`
`the above-cited passage as teaching that the switchover device provides only the pre-
`
`selection function while the indication and setting device (separate from the switchover
`
`
`
`217 ’788 Patent, 2:27-30.
`218 ’788 Patent, 2:7-15.
`219 ’788 Patent, 2:15-18.
`
`2111403.002 - 0981
`
`71
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 12 of 34 PageID #: 34248
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`device) provides the "pre-setting of set points" functionality. However, there is no
`
`disclosure within the specification as to how the switchover device actually performs said
`
`pre-selection and to what extent a user is involved in the pre-selection.
`
`141. Finally, with regard to the “controller” term, the Court has construed the term to
`
`mean “electronic controller”220; I adopt this meaning in my analysis. The specification of
`
`the ’788 Family Patents discloses the function of the controller: “the road machine 1 is
`
`provided with a leveling device 4 with at least one controller 6a, 6c which receives set
`
`values for the milling depth and/or the slope of the milling drum 3. Exchangeable sensors
`
`A, B, C can be connected to the controllers 6a, 6c of the leveling device 4”221 and “The at
`
`least one controller 6a, 6c effects a milling depth control and/or a slope control for the
`
`milling drum 3 conditional on pre-determined set values and the currently measured
`
`actual values of the at least one sensor A, B, C, with an adjustment value being returned
`
`for achieving or maintaining the set value in the milling operation.”222 Accordingly, from
`
`the specification and the Court’s construction, a PHOSITA would understand the
`
`controller is an electronic controller which compares set values of operating parameters
`
`to values received from the sensors and provides adjustment/correction values (e.g. to the
`
`leg hydraulics) in order to achieve or maintain a specified set value of an operation
`
`parameter.
`
`142. Therefore, taken in concert, the specification (in view of the Court’s
`
`constructions) would be interpreted by a PHOSITA as teaching three separate functional
`
`elements within the claimed invention:
`
`
`
`220 Dkt. 168, p. 3.
`221 ’788 Patent, 3:63-67.
`222 ’788 Patent, 4:7-12.
`
`2111403.002 - 0981
`
`72
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 13 of 34 PageID #: 34249
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`• controller: an electronic controller which is connected to a plurality of sensors
`
`(A, B, C). The controller receives set values for operational parameters and
`
`compares them to currently measured values and issues adjustment values to
`
`•
`
`achieve or maintain the set value.
`indication and setting device: an operating parameter input and display device
`which displays currently measured values from the sensors, as well as allowing
`
`a user to set setpoints for operational parameters of these sensors; the indication
`
`and setting device is also capable of altering both set and currently measured
`
`values for the replacement sensor.
`
`• switchover device: a controller input and output switch that during a sensor
`
`switchover procedure uses set values for a replacement sensor to exchange said
`
`replacement sensor for a sensor actively involved in control in such a way that
`
`the adjustment values (provided by the controller) are not erratically altered, and
`
`the milling operation overall is not interrupted.
`
`143. This understanding of the respective roles of the indication and setting device,
`
`switchover system, and controller generally comports with Figure 2 of the ’788 Patent,
`
`see Figure 24. However, it is worth pointing out that Figure 2 of the ’788 Patent is
`
`described within the specification as “Fig. 2 shows a leveling device,” whereas Figure 2
`
`would be more recognizable by a PHOSITA as something akin to a “block diagram”.223
`
`144. Additionally, Figure 2 of the ’788 Patent provides some confusion in its labelling
`
`of elements; for example, the specification text identifies all of the indication and setting
`
`device, switchover device, and controller as parts of the leveling device 4 whereas Figure
`
`
`223 Block diagrams are commonly used to describe control systems by representing various parts/functions of the
`system with blocks, with signal lines defining the relationship between the blocks.
`
`2111403.002 - 0981
`
`73
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 14 of 34 PageID #: 34250
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`2 of the ’788 Patent appears to identify the indication and setting device (2) and
`
`switchover device (10a and 10b) as separate elements from the leveling device 4.
`
`Figure 24:
`
`
`Annotated Figure 2 from the ’788 Patent and the label of the figure as found in
`the ’788 Patent (right). As can be seen, the figure only shows a general block
`diagram of the leveling system (4) which, contrary to the specification, does not
`include the indication and setting device (2) nor switchover device (10).
`The Claim Terms as Used in the Claims of the ’788 Family Patents
`
`The ’788 Patent
`
`145. Claims 1[a]-1[f] of independent Claim 1 of the ’788 Patent recite functionality of
`
`the above terms which generally comports with the functions I identify above. For
`
`example, Claim 1 recites (emphasis added):
`
`
`
`
`
`1[d] a plurality of indication and setting devices, each of the indication and
`setting devices being associatable with at least one of the plurality of selectable
`sensors, each indication and setting device being operable to indicate the current
`actual value of and to set a set value for the operating parameter sensed by its
`associated sensor;
`
`1[e] a controller operable to control the milling depth and/or the slope of the
`milling drum conditioned on set values and sensed current actual values of the
`operating parameters sensed by a selected subset of the plurality of selectable
`sensors by returning at least one adjustment value to adjust the milling depth
`and/or slope of the milling drum so that the sensed current actual values of the
`
`2111403.002 - 0981
`
`74
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 15 of 34 PageID #: 34251
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`operating parameters approach the set values for the selected subset of the
`plurality of selectable sensors
`
`1[f] a switchover device operable to switch over from control based upon a first
`selected subset of the plurality of selectable sensors to control based upon a
`second selected subset, the second selected subset exchanging at least one
`replacement sensor not in the first subset for at least one replaced sensor that was
`in the first subset; and
`
`146. The last limitation of Claim 1 of the ’788 however, recites:
`
`1[g] the controller being operable to effect switchover from control based upon
`the first selected subset of selectable sensors to control based upon the second
`selected subset of selectable sensors during milling operation without interruption
`of the milling operation and without any erratic alteration of the at least one
`adjustment value for adjusting the milling depth and/or slope of the milling drum.
`
`147. This limitation is in conflict with the taught functionality of the controller within
`
`the specification; e.g., the controller is not described anywhere within the specification as
`
`participating in the switchover process other than receiving set values which result from
`
`the switchover process.
`
`148. Comparing the language of Claim 1[f] to Claim 1[g]; i.e., “a switchover device
`
`operable to switch over” vs. “a controller being operable to effect switchover,” is
`
`instructive. In view of this language difference, a PHOSITA could reasonably conclude
`
`that the switchover device is the element that actually conducts the switchover (operable
`
`to switch over) while the controller simply cooperates with the output of the switchover
`
`device (operable to effect switchover). However, this understanding directly conflicts
`
`with the taught functionality of the switchover device within the specification (emphasis
`
`added):
`
`“The leveling device is provided with a device for the switchover of sensors
`which, upon activation of a switchover command, effects switchover of the
`leveling device from the at least one current sensor to at least one pre-selected
`other sensor without interruption of the milling operation and without any erratic
`alteration of the current adjustment value for the setting of the milling depth
`
`2111403.002 - 0981
`
`75
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 16 of 34 PageID #: 34252
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`and/or for the setting of the slope of the milling drum. The switchover
`device…”224
`
`
`149. Accordingly, there is a clear contradiction between the specification and Claim 1.
`
`If the language “effect switchover” in the claims is meant to connote cooperation in a
`
`process (i.e., without initiating it), and the switchover device is the element that conducts
`
`the switch over (as the claims recite by it being “operable to switch over”) then the
`
`specification teaches that the switchover device only passively cooperates in an action
`
`that it initiates. The specification provides no further teachings that would resolve this
`
`contradiction. A PHOSITA, in view of both the specifications and Claim 1225, would be
`
`left unable to resolve the relative roles of the switchover device and the controller,
`
`preventing them from being able to practice the claimed invention at all, much less
`
`without undue experimentation. Furthermore, due to this contradiction a PHOSITA
`
`would not recognize the invention as claimed within the teachings of the specification
`
`and would not understand that the inventor was in possession of the full scope of the
`
`invention.
`
`150. Therefore, both of Claims 1 and 5 (Claim 5 depending on Claim 1) of the ’788
`
`Patent lack both adequate written description and enablement within the specification of
`
`
`
`
`
`the ’788 Family Patents.
`
`The ’474 Patent
`
`151. The claims of the ’474 Patent also suffer from the contradictions present in the
`
`’788 Patent. For example, both Claim 19 recites:
`
`19[g] wherein the controller and switchover system is operable to change at
`least one of the set value of the operating parameter of the replacement sensor and
`
`
`224 ’788 Patent, 2:7-14.
`225 A similar contradiction is presented in Claim 14 of the ’788 Patent which is not asserted in this matter.
`
`2111403.002 - 0981
`
`76
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 17 of 34 PageID #: 34253
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`1[a] a milling drum, the milling drum being height adjustable with
`regard to milling depth and/or slope;
`
`160. Both the PM-465 and PM-565 include a milling drum that is height adjustable
`
`with regard to milling depth and/or slope, see Figure 26.
`
`161. A product bulletin for the PM-465 describes the milling drum: “The rotor mandrel
`
`on the PM-465 is a triple wrap design with three rows of 51 mm (2”) thick, 100 mm
`
`(3.94”) high, one-piece flighting starting from each of the mandrel.”234 This product
`
`bulletin also describes the adjusting of the milling drum with regard to both milling depth
`
`and slope: “While operating in the automatic mode, the display will show the actual
`
`depth or slope of the rotor in relation to the zero calibration point. The controller will
`
`automatically raise or lower each of the front legs to keep the rotor at the value displayed
`
`in grade or slope.”235
`
`162. A technical presentation produced for the PM-565 also discuss the milling drum
`
`of the PM-565: “The rotor on the PM-565 has three flightings which is commonly
`
`referred to as ‘triple wrap’.”236 Additionally, the operation manual for the PM-565
`
`describes the raising and lowering of the rotor: “The PM-565 has both manual and
`
`automatic control of machine frame/rotor elevation. There is also the option to select
`
`automatic slope control. By controlling machine frame elevation and slope, both cutting
`
`depth and profile of the cut are produced. Hydraulic cylinders in each machine support
`
`leg control rotor height and orientation to grade.”237
`
`
`
`234 CAT0035523.
`235 CAT0035530.
`236 CAT0029775.
`237 CAT0029794.
`
`2111403.002 - 0981
`
`
`
`80
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 18 of 34 PageID #: 34254
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`1[b] and a leveling system operable to control the milling depth and/or
`the slope of the milling drum, the leveling system including:
`
`163. Both the PM-465 and PM-565 comprise a grade/slope control system (leveling
`
`system) operable to control the milling depth and/or slope of the milling drum.
`
`164. With regard to the PM-465, the document titled “Service Manual: Caterpillar
`
`Grade & Slope Electronic Control System”242 describes the leveling system in detail,
`
`stating in the introduction (ellipses added) “The Caterpillar Grade & Slope Electronic
`
`Control System electronically controls the extension of each front leg in order to attain
`
`the desired surface profile…..The system can function in the grade/grade control method
`
`or the grade/slope control method.”243
`
`165. Similarly, a technical presentation for the PM-565 described its leveling system:
`
`“The PM-565 has both manual and automatic control of the machine frame/rotor
`
`elevation. There is also the option to select automatic slope control. By controlling
`
`machine frame elevation and slope, both cutting depth and profile of the cut are
`
`produced. Hydraulic cylinders in each machine support leg control rotor height and
`
`orientation to grade.”244
`
`166. Accordingly, both the PM-465 and PM-565 comprise a leveling system operable
`
`to control the milling depth and/or slope of the milling drum.
`
`
`
`
`
`
`
`
`
`242 CAT-770_048408.
`243 CAT-770_048412.
`244 CAT0029794.
`
`2111403.002 - 0981
`
`82
`
`

`

`Case 1:17-cv-00770-JDW Document 369-31 Filed 04/12/24 Page 19 of 34 PageID #: 34255
`CONFIDENTIAL - ATTORNEYS' EYES ONLY
`
`1[c] a plurality of selectable sensors for sensing current actual values of
`operating parameters including the milling depth and/or the slope of the
`milling drum relative to a reference surface;
`
`167. The Court has construed the term “current actual value” as “currently measured
`
`actual value.”245 I incorporate that definition in my analysis here.
`
`168. Both the P