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`EXHIBIT 2
`EXHIBIT 2
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`EXHIBIT 2
`EXHIBIT 2
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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.
`____________
`
`IPR2022-01278
`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 All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
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`Caterpillar Inc. challenges claims 1–10, 25, 27, 30, 31, 33, 34, and
`36–40 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 1–10, 25, 27, 30, 31, 33, 34, and 36–40
`are unpatentable.
`
`INTRODUCTION
`Background and Summary
`A.
`Caterpillar Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of the challenged claims. Paper 1 (“Pet.”). Wirtgen, 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 26, “PO Sur-reply”). An oral hearing was
`held on October 30, 2023, and a transcript is included in the record. Paper
`34 (“Tr.”).
`Real Parties-in-Interest
`B.
`Caterpillar identifies itself as well as its subsidiaries Caterpillar
`Paving Products, Inc. and Caterpillar Prodotti Stradali S.r.L. as real parties-
`in-interest. Pet. 83. Wirtgen identifies itself and Wirtgen GmbH as real
`parties-in-interest. Paper 9, 2.
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`2
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`Related Matters
`C.
`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.) (the “district court litigation”). Pet. 86; Paper 9,
`2.
`Petitioner and Patent Owner also identify the following pending inter
`
`partes review proceeding as a related matter: IPR2022-01310 challenging
`additional claims of the ’972 patent. Pet. 83; Paper 9, 2; see IPR2022-
`01310. We also note that IPR2022-01264 and IPR2022-01277 between the
`same parties contain similar claims and challenges.
`The ’972 Patent
`D.
`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 known 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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`5
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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.
`
`Challenged Claims
`E.
`Among the challenged claims, claims 1, 31, and 38 are independent
`claims. 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).
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`35 U.S.C. §1 Basis
`103(a)
`OMM, 2 Sehr,3 Samuelson4
`
`Prior Art and Asserted Ground
`F.
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
`Claims Challenged
`1–10, 25, 27, 30, 31,
`33, 34, 36–40
`Pet. 6.
`Petitioner relies on the declaration testimony of Dr. William Singhose.
`See Ex. 1006. 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.5
`
`
`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, “OMM”). 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 The Petition also refers to Zarniko (US 4,943,119) to bolster Petitioner’s
`motivation to combine arguments. See Pet. 28–29. We found Petitioner’s
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`7
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`OMM (Ex. 1002)
`1.
`OMM is an operation and maintenance manual for the PM-465 cold
`planer that is used for cold milling pavement. Ex. 1002, Title, 2. 6
`We reproduce below Petitioner’s annotated versions of the images
`depicted on pages 2 and 40 of OMM.
`
`
`
`
`arguments based on Zarniko unconvincing in our Institution Decision but
`noted that other evidence supported Petitioner’s motivation arguments. See
`Inst. Dec. 26. Petitioner withdrew its reliance on Zarniko in its Reply. See
`Pet. Reply 13 n.3; PO Sur-reply 21 n.5 (acknowledging Petitioner’s
`withdrawal of Zarniko argument). We will not address the parties’
`arguments based on Zarniko in this Decision, and we do not rely on any of
`the Zarniko-based arguments in any of our findings.
`6 When referencing OMM, we use the pagination of the manual, rather than
`the exhibit, as this approach is consistent with how Petitioner references the
`manual. 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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`8
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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.
`Samuelson (Ex. 1004)
`2.
`Samuelson, titled “Hydraulic Cylinder Monitoring Apparatus,” issued
`September 17, 2002. Ex. 1004, codes (54), (45). Samuelson relates to “a
`hydraulic cylinder monitoring apparatus for a welded construction-type
`hydraulic cylinder.” Id. at 1:15–17. Samuelson discloses that hydraulic
`cylinders are used in various industries including “mobile equipment.” Id.
`at 1:35–40. Samuelson recognizes the importance of protecting the position
`measuring structure, e.g. transducer, of the cylinders, while being able to
`interchange “dumb” cylinders without transducers to “smart” cylinders. Id.
`at 1:45–60. Figures 5 and 6 of Samuelson are reproduced below.
`
`10
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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.
`Sehr (Ex. 1037)
`3.
`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 road grooving machine” with “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.
`ANALYSIS
`
`Legal Standards
`A.
`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
`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
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`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).
`Level of Ordinary Skill in the Art
`B.
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id. Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`
`
`7 The parties do not address any objective indicia of nonobviousness in this
`proceeding.
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`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 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. 12.
`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.,
`
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`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 specific
`construction to resolve the prior art grounds raised in the Petition.” PO
`Resp. 12.
`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.
`
`
`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.
`
`16
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`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, although not apparent in the Petition and Patent Owner’s
`Response, the parties have at least an implicit claim construction dispute
`over the scope of limitation 1[h], which we discuss in the context of that
`limitation below.
`D. Obviousness Based on OMM, Sehr, and Samuelson
`Petitioner contends that the combination of OMM, Sehr, and
`Samuelson teaches or suggests each limitation of claims 1–10, 25, 27,
`30, 31, 33, 34, and 36–40. Pet. 6–82. Petitioner provides various reasons in
`support of the motivation to combine the references and points to specific
`aspects of the references as teaching each of the claim limitations. See id.
`Patent Owner argues that (1) Petitioner fails to establish a motivation
`to combine the references as proposed (id. at 29–46); (2) Petitioner fails to
`establish that its proposed combination would “automatically . . . establish a
`parallel orientation of the machine frame relative to the ground surface in the
`direction of travel” (referred to as “parallel-to-surface,” “PTS,” or “parallel-
`to-ground”) as required by each of the challenged claims (PO Resp. 13–28);
`(3) the proposed combination would not meet the additional limitations in
`dependent claims 3–10 (id. at 46–48); and (4) the proposed combination
`would not meet the additional limitations of dependent claim 27 (id. at 48–
`53). We address the parties’ positions as to each argument below. We begin
`by addressing the motivation to combine issue, and then address whether
`Petitioner establishes that the combination teaches or suggests the limitations
`in the challenged claims.
`
`17
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`1.
`
`Petitioner’s proposed combination of OMM, Sehr, and
`Samuelson
`We first present Petitioner’s reasoning for combining the teachings of
`OMM, Sehr, and Samuelson to arrive at the subject matter of the challenged
`claims. We then present Patent Owner’s counter arguments, and our
`discussion of the parties’ arguments.
`Petitioner’s Arguments
`a)
`Petitioner contends that OMM, Sehr, and Samuelson are analogous
`art, as all three references are in the same field of endeavor and reasonably
`pertinent to the problem that the ’972 patent attempts to solve. Pet. 20–22
`(citing Ex. 1002, 2, 32, 48–49, 52; Ex. 1004, 1:35–63, 2:28–31, 4:17–47; Ex.
`1006 ¶¶ 62–63; Ex. 1037, code (57), 1:60–63, 2:44–54); cf. In re Bigio, 381
`F.3d 1320, 1325 (Fed. Cir. 2004) (“References . . . qualify as prior art for an
`obviousness determination only when analogous to the claimed invention.”).
`Patent Owner does not dispute that OMM, Sehr, and Samuelson are
`analogous art.
`Petitioner contends that a person of ordinary skill in the art
`(“POSITA”) “would have understood that OMM’s Electronic Control
`Module (‘ECM’)—an electronic controller—was designed to receive and
`process signals from a variety of sensors all at once, and that the ECM
`would be able to receive and process the position signals generated from a
`sensor-integrated cylinder like Samuelson’s.” Pet. 21 (citing Ex. 1002, 32;
`Ex. 1006 ¶ 63). Petitioner further contends that a POSITA “would have
`been motivated to implement sensor-integrated cylinders like Samuelson’s
`on the PM-465 machine and use them to monitor and change the positions of
`components attached to those cylinders, to keep the machine frame parallel
`
`18
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`to the ground, as taught by Sehr.” Id. at 21–22 (citing Ex. 1002, 32;
`Ex. 1006 ¶ 63).
`Petitioner argues that it would have been motivated to incorporate
`Sehr’s “sensor-driven parallel orientation adjustments, which provides for
`parallelism in the direction of travel, into the machine described by OMM.”
`Pet. 22 (citing Ex. 1006 ¶¶ 64–65). Petitioner notes that PM-465 already has
`a “grade-and-slope system [with] controllers that receive signals from
`multiple sensors, and this information is used to control the drum’s milling
`depth by adjusting the ‘heights of the legs.’” Id. (citing Ex. 1002, 32, 48–
`49). Petitioner contends that Sehr discloses a similar system that relies on
`sensor data “for the vertical adjustment of the front as well as of the rear
`traveling gear height adjustment means.” Pet 22 (citing Ex. 1037, 3:48–52).
`Petitioner further argues that because both systems use systems to adjust the
`orientation of their respective machines by changing the height of the lifting
`columns that “[a] POSITA would have understood that incorporating Sehr’s
`orientation adjustments would require nothing more than the use of
`additional sensors.” Id. at 22–23 (citing Ex.1006 ¶ 64). Petitioner asserts
`that this modification would have a reasonable expectation of success
`because the state of the art recognizes “‘[t]hose skilled in the art can readily
`write software for implementing’ sensors in road-milling machines.” Id.
`(citing Ex. 1050, 4:19–24).
`Petitioner argues that there are several benefits that a POSITA would
`recognize from this modification. Pet. 23. First, Petitioner contends that
`Sehr’s system permits more accurate adjustment of the cutting depth. Id.
`(citing Ex. 1037, 1:60–63; Ex. 1006 ¶ 65). Second, Petitioner argues that
`Sehr’s system avoids cutting depth faults and can compensate for a wavy
`
`19
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`reference plane while assisting the operators work by holding the machine in
`a parallel position. Id. (citing Ex. 1037, 3:53–61). According to Petitioner,
`a “POSITA would have recognized that these benefits would apply to and
`improve OMM, thus further motivating a POSITA to modify OMM with
`Sehr’s parallel adjustment mechanism.” Id.
`Next, Petitioner turns to a further modification of OMM and Sehr with
`Samuelson. Petitioner contends that a person having ordinary skill in the art
`“would have been motivated to implement Sehr’s parallel adjustment system
`in OMM by using sensor-integrated cylinders like Samuelson’s in the PM-
`465’s legs.” Pet. 24–34 (citing Ex. 1006 ¶¶ 66–80). Petitioner asserts that
`the prior art already shows how to use sensors on the front and rear legs of a
`road-milling machine to maintain parallelism from left to right and front to
`back, with the front to back parallelism satisfying the parallel to surface
`limitation of the challenged claims. Id. (citing Exs. 1052–1054 (discussing
`the Roadtec RX-500 road milling machine)).
`Petitioner presents several benefits that would inspire a POSITA to
`make the proposed modification. First, Petitioner contends Sehr’s PTS
`orientation avoids cutting depth faults caused by undesirable inclination
`angles and allows the system to compensate for waviness of the reference
`plane. Pet. 25 (citing Ex. 1037, 3:53–61). Second, the parallel-to-ground
`orientation promotes machine stability and improves the operator’s comfort.
`Id. (citin
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