`Case 1:17-cv-00770-JDW Document 409-25 Filed 06/11/24 Page 1 of 5 PagelD #: 38381
`
`
`
`
`EXHIBIT 25
`EXHIBIT 25
`
`
`
`Case 1:17-cv-00770-JDW Document 409-25 Filed 06/11/24 Page 2 of 5 PageID #: 38382
`Trials@uspto.gov
` Paper No. 13
`571-272-7822
`Entered: May 22, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00155
`Patent 9,624,628 B2
`____________
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`Case 1:17-cv-00770-JDW Document 409-25 Filed 06/11/24 Page 3 of 5 PageID #: 38383
`IPR2018-00155
`Patent 9,624,628 B2
`
`
`In light of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) and
`“Guidance on the Impact of SAS on AIA Trial Proceedings,” issued by the
`Office, April 26, 2018 (“Office Guidance”), we instituted review of all
`challenged claims and all grounds presented in the Petition. Dec. Inst. 2.
`Since institution of this proceeding, we determined in our Final Written
`Decision in a previous proceeding, IPR2017-02186, entered May 2, 2019,
`that claims 1, 2, 5, 6, 9, 10, 12–16, 18–22, and 27–29 of the ’628 patent—are
`unpatentable. Because the prior art references asserted here are offered
`essentially as alternative prior art references to those upon which we have
`already determined these same claims to be unpatentable, and because as
`explained in further detail below, our review reveals substantial similarity
`and overlap with the references asserted against the claims in this case and
`the references asserted in IPR2017-02186, we also find these same claims
`unpatentable in this Decision.
`Notably, we did not find in IPR2017-02186 claims 11 and 17 to be
`unpatentable. Now, having reviewed the arguments of the parties and the
`supporting evidence in this proceeding, we find that Petitioner has
`demonstrated by a preponderance of the evidence that the challenged
`dependent claims 11 and 17 of the ’628 patent, as well as their respective
`base claims 1 and 15—are unpatentable.
`B. Additional Proceedings
`The parties indicated that the ’628 patent is being asserted by Patent
`Owner against Petitioner in other proceedings, namely, Wirtgen America,
`Inc. v. Caterpillar Prodotti Stradali S.r.L. et al., Civ. No. 0:17-cv-02085, in
`the United States District Court for the District of Minnesota, and also in
`Wirtgen America, Inc. v. Caterpillar, Inc., Civ. No. 1:17-cv-00770 in the
`
`3
`
`
`
`Case 1:17-cv-00770-JDW Document 409-25 Filed 06/11/24 Page 4 of 5 PageID #: 38384
`IPR2018-00155
`Patent 9,624,628 B2
`
`
`Petitioner has proved by a preponderance of the evidence that claims
`1, 2, 5, 6, 9–20, and 22 would have been obvious over Operation Manual,
`Parts Manual, and Smith or Neuper.
`V. ORDER
` For the reasons given, it is
`ORDERED, based on a preponderance of the evidence that claims 1,
`2, 5, 6, 9–22, and 27–29 are unpatentable; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`any party to the proceeding seeking judicial review of this Decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`41
`
`
`
`Case 1:17-cv-00770-JDW Document 409-25 Filed 06/11/24 Page 5 of 5 PageID #: 38385
`IPR2018-00155
`Patent 9,624,628 B2
`
`PETITIONER:
`
`Joshua L. Goldberg
`James R. Barney
`David K. Mroz
`Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP
`joshua.goldberg@finnegan.com
`james.barney@finnegan.com
`david.mroz@finnegan.com
`
`PATENT OWNER:
`
`Ralph W. Powers III
`Jon E. Wright
`Kyle E. Conklin
`Steve Merrill
`Daniel E. Yonan
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`tpowers-PTAB@skgf.com
`jwright-PTAB@skgf.com
`kconklin-PTAB@skgf.com
`smerrill-PTAB@skgf.com
`dyonan-PTAB@skgf.com
`
`Ryan D. Levy
`John F. Triggs
`Seth R. Ogden
`PATTERSON INTELLECTUAL PROPERTY LAW PC
`rdl@iplawgroup.com
`jft@iplawgroup.com
`sro@iplawgroup.com
`
`
`42
`
`
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