Case 1:17-cv-00770-JDW Document 409-27 Filed 06/11/24 Page 1 of 55 PageID #: 38458
`Case 1:17-cv-00770-JDW Document 409-27 Filed 06/11/24 Page 1 of 55 PagelD #: 38458
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`EXHIBIT 27
`EXHIBIT 27
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`Case 1:17-cv-00770-JDW Document 409-27 Filed 06/11/24 Page 2 of 55 PageID #: 38459
`Paper 30
`Trials@uspto.gov
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`571-272-7822
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` Entered: January 29, 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.
`____________
`
`IPR2022-01277
`Patent 9,879,391 B2
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting-in-Part Patent Owner’s and Petitioner’s
`Motions to Seal
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`

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`IPR2022-01277
`Patent 9,879,391 B2
`
`
`I.INTRODUCTION
`A. Background and Summary
`Caterpillar Inc. (“Petitioner” or “Caterpillar”) filed a Petition for inter partes
`review of claims 1–20 of U.S. Patent No. 9,879,391 B2 (Ex. 1001, “the ’391
`patent”). Paper 2 (“Pet.”).1 Wirtgen America, Inc. (“Patent Owner” or “Wirtgen”)
`timely filed a Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”).
`We concluded that Petitioner satisfied the burden, under 35 U.S.C. § 314(a),
`to show that there was a reasonable likelihood that Petitioner would prevail with
`respect to at least one of the challenged claims. Accordingly, on behalf of the
`Director (37 C.F.R. § 42.4(a)), and in accordance with SAS Inst., Inc. v. Iancu, 138
`S. Ct. 1348, 1353 (2018), we instituted an inter partes review of all the challenged
`claims, on all the asserted grounds. Paper 9 (“Dec. Inst.”).
`Patent Owner submitted a Response to the Decision to Institute. Paper 14
`(“Patent Owner Response” or “PO Resp.”). Petitioner submitted a Reply. Paper
`18 (“Reply”). Patent Owner submitted a Sur-reply. Paper 20 (“Sur-reply”).2
`A joint hearing was held with the related cases (see Section I.C of this
`Decision) on October 30, 2023. See Paper 29 (“Transcript” or “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`
`
`1 We refer to the public version of the Petition. Petitioner filed a confidential
`version of the Petition under seal as Paper 1.
`2 We refer to the public version of the Sur-reply. Patent Owner filed a confidential
`version of the Sur-reply under seal as Paper 22.
`
`2
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`

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`
`Based on the findings and conclusions below, we determine that Petitioner
`has established by a preponderance of the evidence that claims 1–20 are
`unpatentable.
`
`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. 81. Wirtgen identifies itself and Wirtgen GmbH as real parties-in-interest.
`Paper 6, 2.
`
`C. Related Matters
`Petitioner and Patent Owner each identify the following district court
`
`proceeding as a related matter: Wirtgen Am., Inc. v. Caterpillar, Inc., Case No. 17-
`770-RGA (D. Del.). Pet. 81; Paper 6, 2.
`
`Petitioner and Patent Owner also each identify the following pending inter
`partes review proceeding as a related matter: IPR2022-01264 (the “’264 IPR”)
`challenging claims in Patent 9,879,390 (the ’390 patent”). The ’391 patent in the
`proceeding before us is a continuation of the ’390 patent challenged in the ’264
`IPR. See Ex. 1001, code (60) (stating that the application that matured into the
`’391 patent is a “Continuation of application No. 15/376,023,” which matured into
`the ’391 patent). See Ex. 3001 code (21)
`The ’264 IPR and the proceeding before us are further related in that both
`proceedings involve the same parties, the same declarants offering testimonial
`evidence, and rely on the same two references as an asserted basis of
`unpatentability. Compare Section I.F of this Decision and Section I.F in the Final
`Decision issued in the ’264 IPR).
`Additionally, we note that pending IPR2022-01278 and IPR2022-01310 also
`are related to the proceeding before us and to IPR2022-01264, as summarized in
`
`3
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`

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`the chart below. Citations to the common references identified in the chart are
`provided in the substantive analysis of patentability in this Decision.
`
`
`
`Challenged
`Patent–Title
`
`IPR2022-
`01264
`9,879,390
`“Road Milling
`Machine and
`Method for
`Measuring the
`Milling
`Depth,”
`
`IPR2022-
`01277
`9,879,391
`“Road
`Milling
`Machine and
`Method for
`Measuring the
`Milling
`Depth”
`
`Challenged
`Claims–
`Grounds
`
`1–20– OMM
`and
`Samuelson
`
`IPR2022-
`01278
`8,424,972
`“Road
`Milling
`Machine and
`Method for
`Positioning
`the Machine
`Frame
`Parallel to the
`Ground”
`1–10, 25, 27,
`30–31, 33, 34,
`36–40–OMM,
`Sehr,
`Samuelson
`
`IPR2022-
`01310
`8,424,972
`“Road
`Milling
`Machine and
`Method for
`Positioning
`the Machine
`Frame
`Parallel to the
`Ground”
`1, 15, 16, 22,
`23, 26–OMM,
`Sehr,
`Samuelson
`
`1, 12–OMM,
`Sehr, Matsuda
`
`Caterpillar
`Inc.
`Wirtgen
`America, Inc.
`
`1–6, 8–17,
`19–22–OMM
`and
`Samuelson
`
`7, 8–OMM,
`Samuelson,
`Zarniko
`Caterpillar
`Inc.
`Patent Owner Wirtgen
`America, Inc.
`
`Petitioner
`
`Caterpillar
`Caterpillar
`Inc.
`Inc.
`Wirtgen
`Wirtgen
`America, Inc.
`America, Inc.
`D. The ’391 Patent
`We make the following findings of fact concerning the ’391 patent.
`The ’391 patent discloses “a self-propelled road milling machine, especially
`a cold milling machine, as well as [] methods for measuring the milling depth.”
`Ex. 1001, 1:21–23. The ’391 patent explains that “a problem with known road
`milling machines [is] that the milling depth can not be controlled accurately
`enough” so that measuring “an adjustment of side plates, for example, with respect
`
`4
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`Patent 9,879,391 B2
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`to the machine frame is not sufficiently accurate.” Id. at 1:47–58. The ’391 patent
`purports to address this problem, in one embodiment, by using side plates having a
`plurality of sensors “spaced apart in the travelling direction.” Id. at 3:34–36.
`Figure 1 of the ’391 patent is reproduced below.
`
`
`
`Figure 1 “shows a cold milling machine.” Ex. 1001, 3:57. The milling
`machine includes a machine frame 4 supported by a track assembly having two
`front chain tracks 2 and at least one rear chain track 3. Chain tracks 2, 3 are
`connected with machine frame 4 through lifting columns respective 12, 13. Id.
`at 4:9–13. Using lifting columns 12, 13, machine frame 4 can be moved to a
`predetermined inclined position with respect to the ground or traffic surface 8. Id.
`at 4:15–18. Machine frame 4 supports milling roll 6. Id. at 4:18. 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 4:25–28.
`Side plates 10 are arranged on either side near the front end of milling roll 6.
`Id. at 4:36–37. Stripping means 14 are provided with measuring means 16 that
`
`5
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`allow determination of the current milling depth at the level of the stripping means
`14 or the calculation of the milling depth at the level of the rotational axis of the
`milling roll. Ex. 1001, 4:37–41.
`The ’391 patent explains that measuring means 16, preferably formed by
`“position sensing means” measure the displacements of “sensor means” positioned
`on side plates 10, beam 20, or stripping plate 15 with respect to machine frame 4 or
`relative to each other. Id. at 4:49–53.
`Figure 7a of the ’391 patent, reproduced below, illustrates an embodiment of
`position sensing means of the side plates.
`
`
`Figure 7a is a “schematic illustration of the measurement error occurring at
`
`the stripping plate of the stripping means in the absence of parallelism between the
`machine frame and the ground or traffic surface.” Ex. 1001, 4:1–4. Figure 7a
`evidences the extent to which side plates 10 are pivotable with respect to machine
`frame 4. Id. at 6:18–20. Piston/cylinder units 30, 32 are provided with position
`
`6
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`

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`sensing systems, and their measuring signals may be used to determine the distance
`of side plates 10 from machine frame 4. Id. at 6:20–24. The ’391 patent explains:
`
`Should two measuring means be used, one in front of the side plates 10
`and one behind the same, seen in the travelling direction, it is also
`possible to determine the longitudinal inclination of the machine frame
`4 with respect to the ground or traffic surface 8 or to also determine the
`transverse inclination of the machine frame 4 by a comparison of the
`measured values for both side plates 10 on both sides of the milling roll
`6.
`Id. at 5:43–50.
`
`E. Illustrative Claim
`Among the challenged claims, claims 1, 8, and 16 are independent claims.
`Independent claim 1 is directed to a “self-propelled road milling machine.”
`Ex. 1001, 6:53–7:7. Independent claim 8 is directed to a “method of controlling a
`milling machine.” Id. at 7:38–51. Independent claim 16 is directed to a “method
`of measuring a milling depth of a milling machine.” Id. at 8:15–38.
`Independent claim 1 is illustrative and is reproduced below.
`1. A self-propelled road milling machine, comprising:
`a machine frame;
`at least two front ground engaging supports, and at least one rear ground
`engaging support;
`front and rear lifting columns supporting the frame from the ground
`engaging supports, each of the front and rear lifting columns
`comprising a position sensor configured to detect a lifted condition
`for a respective lifting column;
`a milling roller supported from the frame for treatment of a ground
`surface;
`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; and
`first and second height adjustable side plates arranged on opposite sides
`of the milling roller, at least one of the side plates comprising a
`plurality of position sensors spaced apart in a traveling direction of
`
`7
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`
`the milling machine, wherein each side plate position sensor
`generates position signals representing changes in position for a
`respective side plate.
`Id. at 6:53–7:7.
`To further illustrate the close relationship between the ’391 patent in the
`proceeding before us and the ’390 patent in related IPR2022-012643, the following
`chart compares claim 1 from each patent, with differences shown in a red font.
`
`Pat. No. 9,879,390
`IPR2022-01264
`1. A self-propelled road milling
`machine, comprising:
`a machine frame;
`at least two front ground engaging
`supports, and at least one rear ground
`engaging support;
`front and rear lifting columns
`supporting the frame from the ground
`engaging supports;
`
`
`
` a
`
` milling roller supported from the
`frame for treatment of a ground
`surface;
`a height adjustable stripping plate
`arranged behind the milling roller and
`operable to be lowered, during
`
`Pat. No. 9,879,391
`IPR2022-01277
`1. A self-propelled road milling
`machine, comprising:
`a machine frame;
`at least two front ground engaging
`supports, and at least one rear ground
`engaging support;
`front and rear lifting columns
`supporting the frame from the ground
`engaging supports, each of the front
`and rear lifting columns comprising a
`position sensor configured to detect a
`lifted condition for a respective lifting
`column;
`a milling roller supported from the
`frame for treatment of a ground
`surface;
`a height adjustable stripping plate
`arranged behind the milling roller and
`operable to be lowered, during
`
`
`3 The ’390 patent is Ex. 3001 in this proceeding. A Final Decision was entered
`determining claims 1–22 of the ’390 patent unpatentable. IPR2022-01264, Paper
`31 (PTAB Jan. 22, 2024).
`
`8
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`
`
`operation, into a milling track
`generated by the milling roller; and
`first and second height adjustable side
`plates arranged on opposite sides of the
`milling roller, at least one of the side
`plates comprising
`a plurality of position sensors spaced
`apart in a traveling direction of the
`milling machine, wherein each side
`plate position sensor generates position
`signals representing changes in
`position for a respective side plate.
`
`operation, into a milling track
`generated by the milling roller;
`first and second height adjustable side
`plates arranged on opposite sides of the
`milling roller; and
`
`a plurality of position sensors, each of
`the first and second side plates
`including at least two of the position
`sensors spaced apart in a traveling
`direction of the milling machine,
`wherein each position sensor generates
`position signals representing changes
`in position for a respective side plate.
`
`As shown in the claim comparison above, claim 1 of the ’391 patent recites
`that “a plurality of position sensors” are on “at least one of the side plates,”
`whereas the ’390 patent recites that “at least two position sensors” are on “each of
`the first and second side plates.”
`Claim 1 of the ’391 patent also includes the additional claim limitation that
`“each of the front and rear lifting columns” comprise “a position sensor configured
`to detect a lifted condition for a respective lifting column,” which is not in claim 1
`of the ’390 patent. Claim 8 of the ’390 patent, dependent from claim 1, however,
`includes a substantially similar limitation. See Ex. 3001, 7:32–35 (“The self-
`propelled road milling machine of claim 1, wherein each of the lifting columns
`includes an integrated position sensor configured to directly detect a lifted
`condition of its associated lifting column”).
`
`9
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`

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`Patent 9,879,391 B2
`
`
`F. Prior Art and Asserted Ground
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
`Claims Challenged
`1–20
`
`35 U.S.C. §4 Basis
`103(a)
`OMM5 and Samuelson6
`
`Petitioner relies on the declaration testimony of William Singhose, Ph.D.
`
`See Ex. 1006. Patent Owner relies on the declaration testimony from Christopher
`Rahn, Ph.D., in response. See Ex. 2003.
`II.ANALYSIS
`A. Legal Standards
`Section 103 forbids issuance of a patent when “the differences between the
`subject matter sought to be patented 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 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 ordinary skill in the art; and (4) when available,
`
`
`4 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 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.
`5 Caterpillar’s PM-465 Cold Planer, Operation & Maintenance Manual (Ex. 1002
`hereinafter “OMM” for consistency with the Petition).
`6 Samuelson et al, US 6,450,048 B1, issued Sept. 17, 2002 (Ex. 1004
`“Samuelson”).
`
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`evidence such as commercial success, long felt but unsolved needs, and failure of
`others.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550 U.S.
`at 407 (“While the sequence of these questions might be reordered in any particular
`case, the [Graham] factors continue to define the inquiry that controls.”). The
`Court in Graham explained that these factual inquiries promote “uniformity and
`definiteness,” for “[w]hat is obvious is not a question upon which there is likely to
`be uniformity of thought in every given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and flexible
`approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent
`claiming the combination of prior art elements would have been obvious is
`determined by whether the improvement is more than the predictable use of prior
`art elements according to their established functions. Id. at 417. To support this
`conclusion, however, it is not enough to show merely that the prior art includes
`separate references covering each separate limitation in a challenged claim.
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather,
`obviousness additionally requires that a person of ordinary skill at the time of the
`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.” Id.
`In determining whether there would have been a motivation to combine prior
`art references to arrive at the claimed invention, it is insufficient to simply
`conclude the combination would have been obvious without identifying any reason
`why a person of skill in the art would have made the combination. Metalcraft of
`Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017).
`
`
`7 The parties do not direct us to any objective evidence of non-obviousness.
`
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`
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State Sys.
`Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the claimed
`invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537
`(Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether the
`differences themselves would have been obvious. Consideration of differences,
`like each of the findings set forth in Graham, is but an aid in reaching the ultimate
`determination of whether the claimed invention as a whole would have been
`obvious.”).
`As a factfinder, we also must be aware “of the distortion caused by hindsight
`bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
`U.S. at 421.
`Applying these general principles, we consider the evidence and arguments
`of the parties.
`
`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.” Id.
`“The Graham analysis includes a factual determination of the level of
`ordinary skill in the art. Without that information, a . . . court cannot properly
`assess obviousness because the critical question is whether a claimed invention
`would have been obvious at the time it was made to one with ordinary skill in the
`
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`

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`Patent 9,879,391 B2
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`art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed.
`Cir. 1986); see also Ruiz v. A.B. Chance, 234 F.3d 654, 666 (Fed. Cir. 2000) (“The
`determination of the level of skill in the art is an integral part of the Graham
`analysis.”).
`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. Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th
`1346, 1353 (Fed. Cir. 2022) (citing Daiichi Sankyo Co. v. Apotex, Inc.,
`501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Env’t Designs, Ltd. v. Union Oil
`Co., 713 F.2d 693, 696 (Fed. Cir. 1983). These factors are not exhaustive but
`merely are a guide to determining the level of ordinary skill in the art. Daiichi
`Sankyo, 501 F.3d at 1256. 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. “The patent’s purpose also can be informative.” Best Med. Int’l, 46
`F.4th at 1353 (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
`Patrick Co., 464 F.3d 1356, 1362–63 (Fed. Cir. 2006).
`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. 5 (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. Petitioner does not state the basis for these conclusions.
`
`13
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`

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`
`
`Dr. Singhose repeats Petitioner’s conclusions without any additional facts,
`data, or analysis to support his “opinion.” See 37 C.F.R. § 42.65(a) (“Expert
`testimony that does not disclose the underlying facts or data on which the opinion
`is based is entitled to little or no weight.”).
`“Patent Owner does not dispute the Petition’s definition.” PO Resp. 25.
`For purposes of this Decision, based on the prior art, the sophistication of the
`technology disclosed in the ’391 patent, and giving little weight to Dr. Singhose’s
`opinion, we adopt Petitioner’s definition of the level of ordinary skill.
`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 asserts that “all challenged claims [are] unpatentable under their
`plain and ordinary meaning,” and that “no terms need construction here.” Pet. 5.
`
`“Patent Owner does not believe that any claim terms need construction to
`resolve the prior art grounds raised in the Petition.” PO Resp. 25.
`We do not perceive the need to construe any claim limitation. Claims must
`be construed “only to the extent necessary to resolve the controversy.”
`AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021)
`(quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`14
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`IPR2022-01277
`Patent 9,879,391 B2
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`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy,’ we need not construe the claim preambles here where the
`construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).
`We now turn to the merits of Petitioner’s asserted Ground of unpatentability.
`D. Patentability of Claims 1–20
`Based on OMM and Samuelson
`1.
`OMM (Ex. 1002)
`We make the following findings of fact concerning the OMM reference.
`OMM is an operation and maintenance manual for a Caterpillar PM-465
`cold planer that is used for cold milling pavement. Ex. 1002, 1, 48.
`We reproduce below Petitioner’s annotated versions of images depicted on
`pages 4 and 42 of OMM.
`
`
`8 Ex. 1002 has original page numbers on the top left or top right corners of each
`substantive page. Petitioner, in accord with our rules (37 C.F.R. § 42.63(d)(2)(i)),
`also uniquely numbered each page in sequence, placed on the bottom left corner of
`each page, in the format of “Page 1 of 162.” See Ex. 1002, 1. As a result, each
`page has two different numbers. For example, original page number 2 (upper left
`corner of the page) corresponds to “Page 4 of 162” (lower left corner of the page)
`based on pagination required by our rules. Petitioner, however, cites to the
`original pagination, rather than the unique pagination required by our rules. See
`Pet. 6 (citing to “OMM, 2 and 40” for figures that appear at Ex. 1002, 4 and 42).
`The purpose of requiring unique pagination is for the parties to cite to these unique
`page numbers. We note Patent Owner cited to the unique page numbers added by
`Petitioner. See PO Resp. 2, n.1 (“The Parties have agreed to use the stamped
`pagination they have applied to the exhibits for the remainder of the IPR.”).
`Accordingly, we also will cite to the unique page numbers of all exhibits.
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`Patent 9,879,391 B2
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`The images on pages 4 and 42 of OMM are annotated by Petitioner to
`denote various uncontested components of the milling machine. Pet. 6. 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 milling 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, 34. According to OMM, the
`contacting sensor can include a grade slope wheel as depicted in the image on Page
`51 of OMM, reproduced below.
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`The image on page 51 of OMM, on the left-hand side of the page, includes a
`black arrow denoting a grade slope wheel on the side plate of the milling machine.
`Ex. 1002, 51. An enlarged version of the grade slope wheel is shown on page 64
`of OMM, reproduced below.
`
`
`The image on page 64 of OMM shows the grade slope wheel disclosed in
`OMM mounted on a side plate of the milling machine.
`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
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`Case 1:17-cv-00770-JDW Document 409-27 Filed 06/11/24 Page 19 of 55 PageID #: 38476
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`Patent 9,879,391 B2
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`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 50.
`
`Samuelson (Ex. 1004)
`2.
`We make the following findings of fact concerning the Samuelson reference.
`Samuelson relates to “a hydraulic cylinder monitoring apparatus for a
`welded construction-type hydraulic cylinder.” Ex. 1004, 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. Ex. 1004, 4:27–28. According to
`Samuelson, when pressurized hydraulic oil is directed into port 19, cylinder 12
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`moves to the right and follower 24 will move with it, which will change the
`resistance. Id. at 4:29–33. “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. Samuelson discloses the
`benefits of “smart cylinders:”
`As programmable Logic Controller (PLC) usage became more
`cost effective, original equipment manufacturer’s (OEMs) producing
`mobile equipment have employed them to improve operator interface
`requirements (user friendly) as well as automate functions repeatedly
`used by the equipment. Many functions involved the use of cylinders
`as linear actuators. The position and movement of these actuators had
`to be monitored and communicated back to the PLC if