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`EXHIBIT 1
`EXHIBIT 1
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`EXHIBIT 1
`EXHIBIT 1
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`Paper 34
`Trials@uspto.gov
`571-272-7822
`Entered: February 6, 2024
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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.
`____________
`
`IPR2022-01310
`Patent 8,424,972 B2
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
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`Caterpillar Inc. challenges claims 1, 12, 15, 16, 22, 23, and 26 of U.S.
`Patent No. 8,424,972 B2 (Ex. 1001, the “’972 patent”), which is assigned to
`Wirtgen America, Inc. We have jurisdiction under 35 U.S.C. § 6, and we
`issue this Final Written Decision pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73 (2022). For the reasons set forth below, we determine that
`Petitioner has shown that claims 1, 15, 16, 22, and 26 are unpatentable and
`has not shown that claims 12 or 23 are unpatentable.
`
`INTRODUCTION
`A. Background and Summary
`Caterpillar Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of the challenged claims. Paper 1 (“Pet.”). Wirtgen America, Inc.
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 11
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
`review as to all challenged claims and all grounds raised in the Petition.
`Paper 12 (“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 18,
`“PO Resp.”), Petitioner filed a Reply (Paper 21, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 27, “PO Sur-reply”). An oral hearing was
`held on October 30, 2023, and a transcript is included in the record. Paper
`34 (“Tr.”).
`B. Real Parties-in-Interest
`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. 83. Wirtgen America identifies itself and Wirtgen GmbH as
`real parties-in-interest. Paper 9, 2.
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`2
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`C. Related Matters
`Petitioner and Patent Owner identify the following district court
`
`proceeding as a related matter: Wirtgen Am., Inc. v. Caterpillar, Inc., Case
`No. 17-770-RGA (D. Del.). Pet. 86; Paper 9, 2.
`
`Petitioner and Patent Owner also identify the following pending inter
`partes review proceeding as a related matter: IPR2022-01278 challenging
`additional claims of the ’972 patent. Pet. 83; Paper 9, 2; see IPR2022-
`01278. We issue the Final Written Decision in IPR2022-01278 concurrently
`with this Decision. We also note that IPR2022-01264 and IPR2022-01277
`between the same parties contain similar claims and challenges.
`D. The ’972 Patent
`The ’972 patent, titled “Road Milling Machine and Method for
`Positioning the Machine Frame Parallel to the Ground,” issued April 23,
`2013, from an application filed December 21, 2007. Ex. 1001, codes (22),
`(45), (54). The ’972 patent ultimately claims priority to a German
`application filed December 22, 2006. Id., code (30).
`The ’972 patent relates to “a self-propelled road milling machine,
`especially a cold milling machine, as well as a method for positioning the
`machine frame parallel to the ground.” Ex. 1001, 1:7–10. The ’972 patent
`explains that there are several known problems with road milling machines
`where the machine frame does not extend parallel to the ground. The ’972
`patent explains that “if the machine frame does not extend parallel to the
`ground, the stripping means will not rest on the ground with sufficient
`exactness behind the milling roller to allow for a residue-free stripping
`process to be performed on the surface under treatment.” Id. at 1:33–38.
`The ’972 patent further states that “if the machine frame is not arranged
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`parallel to the ground, . . . material which has been milled off may intrude
`into the region between the band shoe and the still untreated ground
`surface.” Ex. 1001, 1:38–43. Additionally, the ’972 patent explains that in
`known machines “the milling depth can not be controlled accurately enough
`and that, for this reason, the milling depth has to be measured repeatedly by
`hand during the milling operation.” Id. at 1:46–49.
`The ’972 patent purports to address these problems, in one
`embodiment, through “the control device [that] automatically controls the
`lifting condition of at least one rear and/or front lifting column, as seen in
`the traveling direction, for positioning the machine frame parallel to the
`ground or traffic surface or for positioning the machine frame at a
`predetermined milling level.” Id. at 2:1–6. Figure 1 of the ’972 patent is
`reproduced below.
`
`Figure 1 “shows a cold milling machine.” Ex. 1001, 6:42. 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
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`4
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`lifting columns 12, 13. Id. at 6:66–7:3. 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. Ex. 1001, 7:5–8. 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
`7:16–21. Driver’s stand 5 is arranged above milling roller 6 and provides a
`control panel for the vehicle operator that includes control means 23 for
`controlling the milling depth of the milling roller 6. Id. at 7:22–26. Position
`sensors measure the displacements of side plates 10, beam 20, or stripping
`plate 15 with respect to machine frame 4 or relative to each other. Id.
`at 7:39–43.
`Figure 3 of the ’972 patent is reproduced below.
`
`
`Figure 3 depicts an embodiment of the claimed invention wherein
`
`hydraulic pistons or cylinders 26, 28 lift and lower stripping plate 15 of
`stripping means 14. Id. at 7:61–64. The depicted hydraulic cylinders have
`an integrated position sensing system that generate a position signal and
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`have one end connected to machine frame 4 and the other to stripping plate
`15. Ex. 1001, 7:63–8:3. The ’972 patent explains that “control means 23
`can calculate the current milling depth at the level of the milling roller axis
`from the position sensing signals received” and that “control means 23 can
`automatically control the lifted condition of the front and/or rear lifting
`column 13 . . . to establish parallelism between the machine frame 4 and the
`ground.” Id. at 9:21–30.
`
`E. Illustrative Claim
`Among the challenged claims, claim 1 is independent. Independent
`claim 1 is illustrative and is reproduced below.
`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, with reference to a direction of
`travel;
`[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] first and second height adjustable side plates arranged on
`opposite sides of the milling roller;
`[1f] 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;
`[1g] at least one ground engaging sensor; and,
`[1h] a controller operably associated with the at least one ground
`engaging sensor, the controller being configured to
`automatically control a lifting condition of at least one of the
`lifting columns to establish a parallel orientation of the
`machine frame relative to the ground surface in the direction
`of travel.
`Ex. 1001, 11:63–12:17 (bracketed nomenclature added by Petitioner).
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`F. Prior Art and Asserted Ground
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 15, 16, 22, 23, 26
`1, 12
`
`35 U.S.C. §1 Basis
`103(a)
`OMM, 2 Sehr,3 Samuelson4
`103(a)
`OMM, Sehr, Matsuda5
`
`
`1 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.
`2 Caterpillar, “PM-465 Cold Planer, Operation & Maintenance Manual”
`(Ex. 1002, hereinafter “OMM” for consistency with the Petition). The
`parties somewhat confusingly refer to OMM and “PM-465” interchangeably
`because OMM (the reference as a whole) describes the PM-465 model of
`milling machine. See, e.g., Pet. 1 (defining the reference as “OMM”), 5
`(referring to “PM-465 OMM”), 7 (“The PM-465 OMM describes the PM-
`465 road-milling machine. See OMM, 2. The PM-465 has . . . .”). We will
`generally refer to the reference as OMM to remain consistent with the
`Petition, but the parties’ (and any of our own) references to what the PM-
`465 machine includes should be read as what OMM teaches or suggests, not
`as a distinct prior art reference.
`3 US 5,309,407, issued May 3, 1994 (Ex. 1037, “Sehr”).
`4 US 6,450,048 B1, issued Sept. 17, 2002 (Ex. 1004, “Samuelson”).
`5 Rough Terrain Robot with 4 Turn-over Track Frames – a feasibility study
`on the mechanism, Tomoo Matsuda, et al., IEEE SMC ’99 Conference
`Proceedings. 1999 IEEE International Conference on Systems, Man, and
`Cybernetics (Cat. No.99CH37028) Vol.4, p.842-847 (Ex. 1015, “Matsuda”).
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`Pet. 6.
`Petitioner also relies on the declaration testimony of Dr. William
`Singhose. See Ex. 1006 (providing the Declaration). Patent Owner relies on
`the declaration of Dr. John Lumkes. See Ex. 2020.
`The following subsections provide brief descriptions of the asserted
`prior art references.
`1. OMM (Ex. 1002)
`OMM is an operation and maintenance manual for the PM-465 cold
`planer that is used for cold milling pavement. Ex. 1002, Title, 2. 6
`We reproduce below Petitioner’s annotated versions of the images
`depicted on pages 2 and 40 of OMM.
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`6 When referencing OMM, we follow Petitioner’s practice of citing the
`pagination of the manual, rather than the exhibit. When discussing prior art
`references, Petitioner typically italicizes the name of the reference. When
`we quote the Petition, we do not italicize the name.
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`The images on pages 4 and 42 of OMM are annotated by Petitioner to
`denote uncontested components of the milling machine. Pet. 8; see also
`Prelim. Resp. 9–11. 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
`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.
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`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.
`2. Samuelson (Ex. 1004)
`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.
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`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
`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.
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`“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.
`3. Sehr (Ex. 1037)
`Sehr, titled “Ultrasonic Control Unit for a Traveling Cutter,” issued
`May 3, 1994. Ex. 1037, codes (54), (45). Sehr “relates to an ultrasonic
`control unit for a travelling cutter.” Id. at 1:5–6. We reproduce Sehr’s
`Figure 1, below.
`
`Figure 1 depicts a “a road grooving machine” with a “cutter drum 2,
`which is rotatably supported on the road grooving machine, as well as front
`and rear travelling gears 3, 4” and “at least three ultrasonic sensors 10, 11,
`12, which are arranged one behind the other essentially in the direction of
`movement of the road grooving machine 1.” Id. at 2:7–10, 2:24–27. The
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`ultrasonic sensors in Sehr sample a “reference plane” with their “sound
`cones,” and the sampled plane “is normally a marginal strip of a road whose
`surfacing has to be removed by cutting down to a predetermined depth.” Id.
`at 2:27–31. Sehr further discloses that the control unit “compensates
`substantially for the waviness of the reference plane, and it facilitates the
`work of the operator of the road grooving machine by holding the road
`grooving machine in a parallel position.” Id. at 3:53–60.
`4. Matsuda (Ex. 1015)
`Matsuda discloses “a mobile robot capable of traveling over rough
`terrain [using] a non-interference infinitely turning 4-crawler track
`mechanism.” Ex. 1015, 3. Matsuda further discloses a machine that utilizes
`“automatic posture change and motor coordination control . . . in order to
`overcome ground obstacles.” Id. Matsuda claims that its “vehicle can
`infinitely turn around with the front and rear crawler tracks free from
`interference.” Id. at 4. Matsuda further states that “[e]ach crawler is
`composed of a track frame, a drive sprocket, idler, rotary wheels and rubber
`track. Id. We reproduce Figure 3 of Matsuda below.
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`Figure 3 depicts a drive mechanism for the crawler system with a traveling
`rotary shaft that extends into the robot body and is rotated by a traveling
`motor. Ex. 1015, 4. Matsuda employs a pivot shaft described as “a hollow
`cylindrical shaft in which the travelling rotary shaft is enclosed” that
`“connects the track frame to the track frame turnover motor through a
`reduction gear and torque limiter.” Id. A rotary encoder attached to the
`pivot shaft “detect[s] the rotational position of the pivot shaft or pivoting
`position of the track frame” and “monitors the posture exchange sequence.”
`Id.
`
`ANALYSIS
`
`A. Legal Standards
`To prevail in its challenges, Petitioner must prove unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof
`in an inter partes review).
`Petitioner relies on obviousness in its challenges. Pet. 6. A claim is
`unpatentable as obvious under 35 U.S.C. § 103 if the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time the invention was made to a
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`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 skill in
`the art; and (4) where in evidence, so-called secondary considerations, also
`known as objective indicia of nonobviousness.7 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`An obviousness analysis must include a reason, based upon some
`rational underpinning, why a person of ordinary skill would have been
`motivated to modify the prior art to achieve the claimed invention. In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To
`satisfy its burden of proving obviousness, a petitioner . . . must . . . articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” (citing KSR, 550 U.S. at 418)). The
`requirement of a reason to combine is a safeguard against hindsight bias,
`which is characterized by the “temptation to read into the prior art the
`teachings of the invention in issue.” KSR, 550 U.S. at 421 (quoting Graham,
`383 U.S. at 36).
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`
`
`7 The parties do not address any objective indicia of nonobviousness in this
`proceeding.
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`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
`(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 (“POSITA”)
`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. 6 (citing Ex. 1006 ¶ 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” of the level
`of ordinary skill. PO Resp. 17.
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`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. See Ex. 1006 ¶ 23; see, e.g., Exs.
`1002, 1003 (providing information on the PM-465 Cold Planer); Ex. 1004;
`Ex. 1005; Ex. 1037.
`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. 6. 8
`Patent Owner does not believe that any claim terms need construction to
`resolve the grounds raised in the Petition, but in its claim construction
`section it previews a claim construction argument relevant to dependent
`claim 15. PO Resp. 17–18. We address that issue in the context of claim 15
`below.
`
`
`8 Petitioner “notes that the parties exchanged preliminary claim
`constructions in the parallel litigation,” and provides the construction for two
`terms from that litigation, “controller” and “ground engaging sensor,” but
`argues that “[t]hose constructions are irrelevant to the outcome here and the
`Board thus need not address them.” Pet. 6–7.
`
`17
`
`
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`
`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. For
`example, we address explicit and implicit claim construction issues in the
`context of claims 15 and 23 below.
`D. Obviousness of Claims 1, 15, 16, 22, 23, and 26 Based on OMM,
`Sehr, and Samuelson
`Petitioner contends that the combination of OMM, Sehr, and
`Samuelson teaches or suggests each limitation of claims 1, 15–16, 22–23,
`and 26. Pet. 7, 20–68. Patent Owner raises a number of arguments against
`Petitioner’s challenges. See PO Resp. 18–61. We will address each
`challenged claim below.
`1. Independent Claim 1
`The closely related IPR2022-01278 addresses claims 1–10, 25, 27,
`30, 31, 33, 34, and 36–40 of the ‘972 patent. Because Petitioner challenges
`additional claims in this proceeding that ultimately depend from claim 1,
`Petitioner addresses claim 1 again in this proceeding as a predicate for its
`challenge to those dependent claims. See Pet. 7–57. The arguments and
`evidence Petitioner and Patent Owner rely on as to claim 1 in IPR2022-
`01278 largely mirrors the argument and evidence submitted in this
`proceeding for this Ground based on OMM, Sehr, and Samuelson. See id. at
`
`18
`
`
`
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`
`7–57; PO Resp. 18–51; IPR2022-01278, Papers 1 (Petition), 7–50; Paper 18
`(Patent Owner Response), 13–46. In the Final Written Decision in IPR2022-
`01278, which we issue concurrently with this Decision, we found that the
`combination of OMM, Sehr, and Samuelson renders claim 1 obvious.
`Because we already found claim 1 of the ’972 patent unpatentable
`based on the same combination asserted here and based on the same
`arguments from the parties, we do not repeat that analysis in this Decision.
`Instead, we incorporate our analysis of claim 1 of the ’972 patent in
`IPR2022-01278 into this Decision. Based on that analysis, we find that
`Petitioner proves by a preponderance of the evidence that claim 1 would
`have been obvious based on a combination of OMM, Sehr, and Samuelson.
`2. Dependent Claim 15
`Claim 15 depends from claim 1 and further recites: “the controller is
`configured to detect and control a milling depth of the milling roller; and the
`controller is configured to control the parallel orientation of the machine
`frame independently of control of the milling depth of the milling roller.”
`Ex. 1001, claim 15.
`Petitioner argues that “[t]he controller of the PM-465 is configured to
`detect and control the milling depth of the milling roller.” Pet. 57 (citing
`Ex. 1006 ¶ 154). Petitioner also contends that OMM discloses a PM-465
`with two grade sensors, one on each side of the machine, and that the “PM-
`465’s automatic grade-and-slope system adjusts ‘heights of the legs’ based
`on the information received from the grade-and-slope sensors to ‘control the
`grade and slope of the cut surface.’” Id. at 57–58 (citing Ex. 1002, 32, 48).
`Petitioner further asserts that “OMM explains that grade (or depth of cut) on
`either side of the machine “is controlled by the difference of the heights
`
`19
`
`
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`between the front and rear legs.” Id. at 58 (citing Ex. 1002, 48). According
`to Petitioner, a “POSITA would understand from these disclosures that the
`controller is configured to detect and control the milling depth of the milling
`roller.” Id. As to maintaining parallelism, Petitioner contends that it was a
`well-known principle to promote comfort and stability and that this
`functionality would be used even when not performing milling operations
`and therefore independently of milling depth control as claim 15 requires.
`Id. at 58–59 (citing Ex. 1006 ¶ 156).
`Patent Owner argues that Dr. Singhose, and Petitioner, incorrectly
`views “independently” controlling parallel orientation in claim 15 as
`“automatic control of parallelism of the machine frame relative to the ground
`even when not performing milling operations (i.e., independently of control
`of the milling depth of the milling roller).” PO Resp. 52–53 (citing Pet. 58–
`59). According to Patent Owner, a “POSITA would have understood that
`the additional limitations of claim 15 are only meaningful in the milling
`context.” Id. at 53 (citing Ex. 2020 ¶ 157). Patent Owner relies on the first
`limitation of claim 15 requiring that “the controller is configured to detect
`and control a milling depth of the milling roller” and concludes that “when
`the machine is not milling, the controller is no longer configured to control
`milling depth.” Id. (citing Ex. 2020 ¶ 158). Patent Owner concludes that
`“[c]orrectly construed, claim 15 requires both the configuration to detect and
`control milling depth and the configuration to control parallel orientation
`independently of milling depth control, all during the milling process.” Id.
`at 53–54 (citing Ex. 2020 ¶¶ 157–160). Petitioner’s approach, in Patent
`Owner’s view, would render “independently” meaningless. Id. at 54. Patent
`Owner also argues that “Petitioner has not explained how the proposed
`
`20
`
`
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`
`combination’s controller establishes PTS when not milling” because
`Petitioner’s proposed combination using leg signals would only work “so
`long as the ground remains level and no obstacles are encountered.” Id.
`(citing Ex. 2020 ¶ 161).
`In its Reply, Petitioner argues that Patent Owner misconstrues claim
`15 to require (1) the detecting and controlling milling depth functionality
`and (2) the controlling parallel orientation functionality “to both occur
`dur
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