Case 1:17-cv-00770-JDW Document 418-2 Filed 06/18/24 Page 1 of 69 PageID #: 38863
`Case 1:17-cv-00770-JDW Document 418-2 Filed 06/18/24 Page 1 of 69 PagelD #: 38863
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`EXHIBIT 2
`EXHIBIT 2
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`Case 1:17-cv-00770-JDW Document 418-2 Filed 06/18/24 Page 2 of 69 PageID #: 38864
`Trials@uspto.gov
`Paper 27
`571-272-7822
`Entered: March 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WIRTGEN AMERICA, INC.,
`Petitioner,
`v.
`CATERPILLAR INC.,
`Patent Owner.
`
`IPR2022-01397
`Patent 9,975,538 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`MEYERS, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
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`

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`Case 1:17-cv-00770-JDW Document 418-2 Filed 06/18/24 Page 3 of 69 PageID #: 38865
`IPR2022-01397
`Patent 9,975,538 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Wirtgen America, Inc. (“Petitioner”) filed a Petition to institute inter
`partes review of claims 1–13 (the “challenged claims”) of U.S. Patent No.
`9,975,538 B2 (Ex. 1001, “the ’538 patent”). Paper 1 (“Pet.”). Caterpillar
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). On March 14, 2023, we instituted an inter partes review of the
`challenged claims on all grounds raised in the Petition. Paper 7 (“Institution
`Decision” or “Inst. Dec.”), 40.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 12, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 17, “Pet. Reply”), and Patent Owner filed a Sur-
`reply to Petitioner’s Reply (Paper 22, “PO Sur-reply”). An oral hearing was
`held on December 11, 2023. A transcript of the hearing is included in the
`record. Paper 26 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the complete record, we
`determine that Petitioner has shown, by a preponderance of the evidence,
`that claims 1–12 are unpatentable. We determine that Petitioner has not
`shown, by a preponderance of the evidence, that claim 13 is unpatentable.
`
`B. Real Parties in Interest
`Wirtgen America, Inc. identifies itself and Wirtgen GmbH as the real
`parties-in-interest. Pet. 80. Patent Owner indicates that Caterpillar Inc. is
`the real party-in-interest. Paper 3, 1.
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`Patent 9,975,538 B2
`C. Related Matters
`Petitioner and Patent Owner state that the ’538 patent is involved in
`Wirtgen America, Inc. v. Caterpillar Inc., Case No. 1:17-cv-00770 (D. Del.).
`Pet. 81; Paper 3, 1. Patent Owner also identifies three related inter partes
`review proceedings, IPR2022-01394 (U.S. Patent No. 7,525,995),
`IPR2022-01395 (U.S. Patent No. 7,523,995), and IPR2022-01396 (U.S.
`Patent No. 9,371,618). Paper 3, 1.
`
`D. The ’538 patent
`The ’538 patent, titled “MILLING MACHINE FUEL EFFICIENCY
`CONTROL SYSTEM,” issued on May 22, 2018. Ex. 1001, codes (54),
`(45). The ’538 patent “relates to . . . methods and systems for controlling the
`rotor speeds of cold planers and rotary mixers with optimized performance
`and fuel efficiency.” Id. at 1:6–9. According to the ’538 patent, “changes in
`engine speed and engine load throughout the operation can cause unwanted
`variations in the rotor speed” and existing milling machines “provide
`variable transmissions which allow for variations in the engine speed
`without affecting rotor speed.” Id. at 1:32–37. However, “these
`conventional systems do not further address fuel efficiency, which . . . can
`be adversely affected by variations in engine speed and engine load.” Id. at
`1:37–40. Thus, the ’538 patent purports to provide “solutions for controlling
`and maintaining a desired rotor speed of a milling machine, which also takes
`fuel consumption or efficiency into consideration.” Id. at 1:41–44.
`Figure 1, reproduced below, shows a side view of an exemplary
`milling machine. Ex. 1001, 2:22.
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`Figure 1 above shows milling machine 100 including rotor engine 122 as a
`power source that drives rotor 118 “via a hydrostatic, mechanical, or
`hydromechanical drive arrangement, such as a continuously variable
`transmission (CVT) 124.” Id. at 2:63–67.
`Figure 2, reproduced below, shows a diagrammatic view of an
`exemplary control system. Ex. 1001, 2:24–25.
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`Figure 2 above shows control system 128 that may be integrated with
`milling machine 100 of Figure 1, to control rotor 118 in response of input
`received via operator interface 126. Id. at 3:8–12. Control system 128
`includes controller 130 in communication with memory 132, operator
`interface 126, engine 122, rotor 118, and CVT 124. Id. at 3:12–15.
`Controller 130 communicates with sensors 134 for determining engine speed
`via engine output 136 and for determining rotor speed via CVT output 138.
`Id. at 3:15–20. Predetermined algorithms or instructions stored in memory
`132 are used to operate controller 130. Id. at 3:27–29. CVT 124 includes
`clutch 140, mechanical arrangement 142, hydrostatic arrangement 144, and
`planetary gear set 146. Id. at 3:30–37.
`CVT output 138 provides communication between rotor 118a and
`carrier 152 of planetary gear set 146. Ex. 1001, 3:48–50. CVT 124 and
`planetary gear set 146 “may be operated to continuously adjust the gear
`ratio, for instance, between the engine output 136 and the CVT output 138,
`in a manner which substantially maintains the rotor speed at the desired rotor
`speed specified by the operator irrespective of changes in the engine speed.”
`Id. at 3:51–57. Memory 132 is associated with controller 130 “in the form
`of lookup tables, maps, mathematical formulations, or any other suitable
`format” that enables controller 130 to automatically adjust one of,
`engine 122 and hydraulic motor 158 of hydrostatic arrangement 144, to
`output a desired rotor speed. Id. at 3:65–4:3.
`Figure 4, reproduced below, “is a tabular illustration of fuel
`consumption rates and the associated efficiency points that may be
`referenced by” the disclosure of the ’538 patent. Id. at 2:30–32.
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`Figure 4 above is a graphical representation of the relative fuel consumption
`rates that may be used to predefine efficiency points 162, or combinations of
`engine speed and engine load expected to provide relatively better fuel
`economy. Id. at 4:14–18. According to the ’538 patent
`[i]nformation pertaining to these relationships between fuel
`consumption rate, engine speed and engine load, or at least the
`efficiency
`points 162 associated
`therewith, may
`be
`preprogrammed within the memory 132 and available to the
`controller 130, such as in the form of lookup tables, maps,
`mathematical formulations, or the like.
`Id. at 4:18–23. Using efficiency points 162 as reference, controller 130 may
`control engine 122 to output an engine speed that is not only appropriate for
`the determined engine load, but also fuel efficient. Id. at 4:24–27. In
`particular, controller 130 communicates with engine 122 “to adjust engine
`speed based on changes in the engine load and predefined efficiency
`points 162 for better fuel economy.” Id. at 4:31–34.
`Figure 5, reproduced below, is a flow diagram of a method for
`controlling a milling machine. Id. at 2:33–34.
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`Figure 5 above shows method 164 for controlling milling machine 100 that
`has rotor 118 coupled to engine 122 through CVT 124, from the previous
`figures. Id. at 4:64–67. Starting in block 164-1, controller 130 receives a
`desired rotor speed from operator interface 126 of milling machine 100. Id.
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`at 4:67–5:3. In block 164-2, controller 130 determines the current engine
`load and speed via sensor 134 at engine output 136. Id. at 5:3–7. In block
`164-3, controller 130 retrieves predefined fuel efficiency points 162 from
`memory 132 to determine an optimum engine speed for the given engine
`load. Id. at 5:7–12. Then, at block 164-4, controller 130 compares the
`actual speed to the optimum engine speed. Id. at 5:15–17. If the actual
`speed is not at the optimum engine speed, controller 130 adjusts the engine
`speed at block 164-5, whereas if the actual speed is at the optimum engine
`speed, controller 130 then determines the actual rotor speed at block 164-6.
`Id. at 5:18–26. Thereafter, at block 164-7, the actual rotor speed is
`determined whether it is the desired speed such that: (1) if it is not, the gear
`ratio is adjusted at block 164-8, and (2) if it is, controller 130 monitors “for
`any changes necessitating further gear ratio adjustments” including actual
`rotor speed, desired rotor speed, engine speed, and engine load, at block
`164-9. Id. at 5:26–64.
`
`E. Challenged Claims
`Petitioner challenges claims 1–13 of the ’538 patent. Pet. 1. Claims 1
`and 6 are independent claims. Independent claim 1, reproduced below, is
`illustrative of the challenged claims.
`1. A controller-implemented method of controlling a machine
`having a rotor coupled to an engine through a variable
`transmission, comprising:
`receiving a desired rotor speed;
`determining an engine load of the engine;
`adjusting an engine speed of the engine based on the engine
`load and one or more predefined efficiency points at least
`partially based on predetermined fuel consumption rates
`and providing optimum engine speeds for different engine
`loads; and
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`Patent 9,975,538 B2
`adjusting a gear ratio of the variable transmission based on the
`engine speed and the desired rotor speed.
`Ex. 1001, 6:20–32.
`
`F. Prior Art and Instituted Grounds of Unpatentability
`We instituted trial based on all asserted claims and grounds of
`unpatentability as follows:
`
`Claim(s) Challenged
`1–13
`8, 13
`Pet. 3; Inst. Dec. 40.
`
`35 U.S.C. §
`1031
`103
`
`Reference(s)/Basis
`Willis2, Xing3
`Willis, Xing, Laux4
`
`Petitioner submits a declaration of Jeffrey L. Stein, Ph.D. (Ex. 1003)
`in support of its contentions. Patent Owner submits a declaration of Abid
`Kemal, Ph.D. (Ex. 2001) in support of its Response. Dr. Stein was cross-
`examined. See Ex. 2003 (deposition transcript of Dr. Stein). Dr. Kemal was
`also cross-examined. See Ex. 1028 (deposition transcript of Dr. Kemal).
`The following subsections provide brief descriptions of the asserted
`prior art references.
`1. Overview of Willis (Ex. 1005)
`Willis “relates to road milling machines, and more particularly to
`systems for controlling milling machine operation.” Ex. 1005 ¶ 1. Figure 2,
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`that issued as the ’538 patent was filed after March 16, 2013, we apply the
`AIA version of § 103. See Ex. 1001, code (22).
`2 U.S. Patent Application Pub. No. 2010/0014917 A1, published Jan. 21,
`2010 (Ex. 1005, “Willis”).
`3 U.S. Patent No. 9,656,656 B2, issued May 23, 2017 (Ex. 1006, “Xing”).
`4 U.S. Patent No. 9,864,347 B2, issued Jan. 9, 2018 (Ex. 1012, “Laux”).
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`reproduced below, “is a side elevational view of a milling machine with a
`control system.” Id. ¶ 8.
`
`Figure 2 above shows milling machine 1 including cutter drum 3 coupled to
`engine 4. Id. ¶ 17. Milling machine 1 also includes control system 10 that
`comprises regulator 12 configured to adjust a speed of cutter drum 3. Id.
`Figure 1, reproduced below, “is a schematic view of a control system
`for a milling machine.” Ex. 1005 ¶ 7.
`
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`Figure 1 above shows control system 10 having drum speed selector 14
`“configured to generate an input IDS corresponding to a desired drum cutting
`speed DSD, and control 16.” Id. ¶ 17. Control 16 receives the input IDS from
`selector 14 to operate regulator 12 “such that the actual drum speed DS at
`least generally corresponds to the desired speed DSD.” Id. Drum speed
`selector 14 includes buttons 21A, 21B, 21C, and 21D as input members 20
`to generate inputs that correspond to different desired drum speeds. Id. ¶ 18.
`Thus, each button or input member corresponds to a different desired
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`rotational speed DSDN of cutter drum 3. Id. Control system 10 preferably
`further comprises sensor 20 “configured to sense the actual drum speed DS
`and to communicate with” control 16, “such as by transmitting a signal
`corresponding to drum speed DS.” Id. ¶ 21. Willis discloses that “[w]hen
`the engine 4 is configured to directly drive the cutter drum 3 as preferred, the
`regulator 12 is configured to adjust a speed of the engine 4 so that the sensed
`drum speed DSS is generally equal to the desired drum speed DSD.” Id. ¶ 22.
`Figure 9, reproduced below, “is a logic flow chart depicting preferred
`operating features of a control.” Ex. 1005 ¶ 15.
`
`
`
`Figure 9 above shows control 16 for operating pumps and crawler
`assemblies of milling machine 1. Id. ¶ 24. Willis discloses that control 16 is
`“configured to compare the sensed drum speed DSS with the desired speed
`DSD, and to adjust” the pumps to reduce the speed of the crawler motors
`“when the sensed drum speed DSS has a value lesser than a predetermined
`portion PDS of the desired speed DSD.” Id. Thus, control 16 “causes the
`
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`milling machine travel speed ST to be reduced whenever the cutting drum 3
`is rotating at less than a desired speed DSD, which generally indicates that
`the load on the drum 3 is greater than desired (e.g., drum 3 begins cutting
`relatively harder material).” Id.
`
`Willis further discloses control 16 is also configured to adjust the
`pumps so as to increase the speed of the crawler motors “when the value of
`the sensed drum speed DSS increases from lesser than or about the
`predetermined portion PDS of the desired speed to either greater than the
`desired speed predetermined portion PDS or to about the desired speed DSS.”
`Ex. 1005 ¶ 25. Thus, control 16
`provides a ‘load control’ feature that decreases the machine
`travel speed ST whenever the load on the drum 3 is sufficiently
`increased so as to lower the drum speed DS substantially below
`a desired speed, and returns the travel speed ST to a desired value
`when the drum load is reduced.
`
`Id.
`
`2. Overview of Xing (Ex. 1006)
`Xing is directed to “a system and method for reducing the fuel
`consumption of a work vehicle.” Ex. 1006, 1:19–21. Xing explains that
`typically, continuously variable transmissions (CVTs) “have a hydro-
`mechanical configuration such that power from the engine flows in parallel
`through both a hydrostatic branch and a mechanical branch.” Id. at 1:30–33.
`“While the efficiency characteristics of conventional engines are relatively
`straight forward, the efficiencies of a CVT are much more complicated.” Id.
`at 1:39–41. “Thus, selecting the optimal operational settings in order to
`achieve the desired productivity and minimize fuel consumption can be quite
`challenging” for vehicles with a CVT. Id. at 1:52–54. For example, existing
`“control algorithms fail to take into account the role that other vehicle
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`components play in impacting the overall efficiency of the vehicle.” Id. at
`1:59–62. Accordingly, Xing purports to provide “a system and method for
`reducing the fuel consumption of a work vehicle that takes into account the
`operating efficiencies of the engine, transmission and various other power
`consuming components of the vehicle.” Id. at 1:63–67.
`Figure 2, reproduced below, is a schematic view of “a transmission
`suitable for use with the work vehicle” (vehicle 10 is shown in Figure 1).
`Ex. 1006, 3:1–2.
`
`
`
`Figure 2 above shows transmission 24 including hydrostatic unit 30 and
`planetary unit 32. Id. at 4:42–43. Transmission 24 is coupled to engine 22
`and controller 116 controls hydraulic pump 36 of hydrostatic unit 30. Id. at
`4:27–31, 4:54–5:8.
`Figure 3, reproduced below, is a schematic view of “a system for
`reducing the fuel consumption of a work vehicle.” Ex. 1006, 3:4–6.
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`Figure 3 above shows system 100 including power take-off (PTO) 110 as
`part of transmission 24, configured to transfer power from engine 22 to one
`or more implements via PTO shaft 112. Id. at 6:64–7:3. Torque sensor 122
`and speed sensor 124 may be mounted on engine 22 and coupled to
`controller 116 for monitoring engine speed. Id. at 8:17–28. Sensor 68
`monitors rotational speeds of various shafts of transmission 24. Id. at
`8:29–34. Xing discloses that the various drive train components and other
`power consuming components of the work vehicle “may generally operate at
`different efficiencies, with each component consuming varying amounts of
`power at differing vehicle operating parameters,” and “[a]s such, the most
`efficient operating conditions for one component may result in decreased
`efficiency for one or more other vehicle components.” Id. at 7:4–11. “For
`example, the efficiency of the transmission 24 may be relatively low when
`the engine settings (i.e., engine speed and engine torque) are selected to
`provide the most fuel efficient engine operation” and system 100 “may be
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`utilized to enhance fuel efficiency and achieve performance/productivity
`requirements by taking into account the individual component efficiencies of
`the various power consuming components of the work vehicle 10.” Id. at
`7:11–21.
`Figure 4, reproduced below, is a flow diagram of “a method for
`reducing the fuel consumption of a work vehicle.” Ex. 1006, 3:8–9.
`
`
`Figure 4 above shows method 200 starting with step 202 in which “a load
`power requirement for the work vehicle 10 may be determined.” Id. at
`9:18–19. According to Xing,
`[t]he load power requirement generally corresponds to the
`amount of power required for the vehicle 10 to finish useful
`work, which may be a function of numerous factors, such as the
`weight of the work vehicle 10, the type of implement being
`hauled by the vehicle 10, field conditions and/or the like.
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`Id. at 9:19–24. Xing discloses that the relationship between the load power
`requirement (Pload), the power produced by engine 22 of work vehicle 10
`(Pengine), and the vehicle’s power loss due to system inefficiencies (Ploss) is
`Pengine = Pload + Ploss. Id. at 9:27–36. At step 204, “a plurality of candidate
`engine speeds may be determined based on the load power requirement.” Id.
`at 10:16–18. At step 206, “suitable efficiency data for one or more of the
`components of the work vehicle 10 may be analyzed to determine a power
`loss value (Ploss) for each candidate engine speed.” Id. at 10:43–46. At step
`208, “a candidate engine power may be determined for each of the candidate
`engine speeds.” Id. at 11:65–67. Finally, at step 210, “fuel efficiency data
`may be analyzed to determine a target engine speed for the work vehicle 10
`based on the candidate engine powers.” Id. at 12:26–28.
`3. Overview of Laux (Ex. 1012)
`Laux is directed to “a method for optimizing an operating function of
`a ground milling machine.” Ex. 1012, 1:15–16. According to Laux, “[t]he
`operation of such ground milling machines is comparatively costly, so that
`the demand always exists for the most optimum possible machine operation,
`for example, with respect to the lowest possible fuel consumption and, at the
`same time, the highest possible milling performance.” Id. at 1:33–37. Laux
`describes a milling machine powertrain that includes an engine that drives a
`rotor via a variable transmission and a controller that coordinates the
`operation of the engine and transmission to control rotor speed. Id. at
`8:60–9:28. More particularly, Laux discloses
`drive transmission 17 is implemented as a planetary transmission
`and acts as a summation transmission, wherein drive energy is
`fed via the input shafts 22 and 23 from the drive unit 4 and from
`the auxiliary drive 20 and is transmitted via the output shaft 21
`from the planetary transmission 17 to the support tube 10.
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`Id. at 9:19–24.
`
`II. ANALYSIS
`
`A. Principles of Law
`“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”)). Petitioner bears the burden of
`persuasion to prove unpatentability of each challenged claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e). This burden never
`shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015).
`1. Obviousness
`A patent claim is unpatentable 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 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) when in evidence, any objective
`
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`evidence of obviousness or non-obviousness.5 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). “While the sequence of these questions might be
`reordered in any particular case” (KSR, 550 U.S. at 407), the Federal Circuit
`has explained that an obviousness determination can be made only after
`consideration of all of the Graham factors. See, e.g., Kinetic Concepts, Inc.
`v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012).
`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. “[O]bviousness must be determined in light of all the facts, and
`. . . a given course of action often has simultaneous advantages and
`disadvantages, and this does not necessarily obviate motivation to combine”
`teachings from multiple references. Medichem, S.A. v. Rolabo, S.L., 437
`F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also PAR Pharm.,
`Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The
`presence or absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`
`
`5 The parties do not present objective evidence of non-obviousness. See
`Pet. 80; see generally PO Resp.; PO Sur-reply.
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`B. Level of Ordinary Skill in the Art
`The level of ordinary 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). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including: “(1) the 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 active workers in the field.” Best
`Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`omitted).
`Petitioner asserts that one of ordinary skill in the art
`would have had a bachelor’s degree in mechanical engineering
`or an equivalent degree and two to five years of experience
`working on designing or developing machine powertrains in
`which a controller controls a powertrain’s internal combustion
`engine and coupled transmission. Additional education may
`substitute for lesser work experience and vice versa.
`Pet. 8 (citing Ex. 1003 ¶¶ 21–24).
`In our Institution Decision, we applied Petitioner’s definition of the
`level of skill in the art, as reproduced above. At that time, we determined
`that this definition was consistent with the prior art of record and the skill
`reflected in the Specification of the ’538 patent. Inst. Dec. 19. In its
`Response, Patent Owner state that it “applies the level of ordinary skill in the
`art provided in the petition.” PO Resp. 7 (citing Pet. 8).
`
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`Based on the arguments presented and the cited references, we find
`Petitioner’s unopposed definition of the level of ordinary skill reasonable,
`supported by the prior art evidence, the Specification, and Dr. Stein’s
`Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this
`Decision, adopt it as our own.
`
`C. Claim Construction
`In an inter partes review proceeding for a petition filed on or after
`November 13, 2018, a patent claim shall be construed 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).6 This rule adopts
`the same claim construction standard used by Article III federal courts,
`which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny. Under that standard, the words of a claim are
`generally given their “ordinary and customary meaning,” which is the
`meaning the term would have to a person of ordinary skill at the time of the
`invention, in the context of the entire patent including the specification. See
`Phillips, 415 F.3d at 1312–13. “[W]here a party believes that a specific term
`has meaning other than its plain meaning, the party should provide a
`statement identifying a proposed construction of the particular term and
`where the disclosure supports that meaning.” Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 44 (Nov. 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”).
`Petitioner asserts that “[i]n this Petition, all terms of the ’538 [p]atent
`claims have been given their ordinary and customary meaning as understood
`
`
`
`6 The Petition in this case was filed August 10, 2022. See Paper 5, 1.
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`Patent 9,975,538 B2
`by one of ordinary skill in the art in light of the specification and the
`prosecution history pertaining to the patent” and that it “does not believe any
`specific constructions are required at this time.” Pet. 31. Patent Owner
`asserts that “[n]o constructions are required to reach a decision rejecting the
`merits of Petitioner’s grounds.” PO Resp. 7 (citing Ex. 2001 ¶¶ 36–37).
`“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.’”
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`(alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`Neither party presents arguments for the express construction of any
`term, instead interpreting the claim terms according to their ordinary and
`customary meaning. Pet. 31; PO Resp. 7.
`For purposes of this Decision, and based on the complete record
`before us, we determine that no construction of any term is necessary.
`
`D. Obviousness over Willis and Xing (Ground 1: Claims 1–13)
`Petitioner asserts that claims 1–13 are unpatentable as obvious over
`Willis and Xing. Pet. 32–76. Petitioner also relies on the testimony of Dr.
`Stein to support its arguments. Id. (citing Ex. 1003). We have reviewed the
`Petition, Patent Owner Response, Petitioner Reply, Patent Owner Sur-reply,
`as well as the relevant evidence discussed in those papers and other record
`papers, and as discussed in greater detail below, we are persuaded that the
`record establishes by a preponderance of the evidence that Petitioner’s
`contentions that claims 1–12 would have been obvious over Willis and Xing,
`as Petitioner contends. We are not persuaded, however, that the record
`establishes by a preponderance of the evidence that Petitioner’s contentions
`
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`that claim 13 would have been obvious over Willis and Xing, as Petitioner
`contends. We adopt Petitioner’s contentions regarding claim 1–12 discussed
`below as our own.
`
`1. Petitioner’s Contentions for Claim 17
`We use Petitioner’s notations to identify the claim elements. See Pet.
`35–52.
`
`a) [1[p]] A controller-implemented method of controlling a
`machine having a rotor coupled to an engine through a
`variable transmission, comprising:8
`Petitioner asserts that the combination of Willis and Xing teaches or
`suggests the subject matter of the preamble (1[p]). Pet. 35–41. More
`particularly, Petitioner annotates Figure 3 of Willis and asserts that Willis
`teaches “milling machine 1 with engine 4 coupled to rotor 3, under control
`of a drum speed control system.” Id. at 35–36 (citing Ex. 1005 ¶ 17).
`Petitioner also annotates Figure 3 of Xing, and asserts that Xing teaches “a
`work machine control system in which a controller controlled an output
`speed of a variable transmission’s output shaft by adjusting the variable
`transmission’s gear ratio as well as the speed of the machine’s coupled
`engine.” Id. at 37–38 (citing Ex. 1006, 4:8–54, Figs. 2, 3; Ex. 1003 ¶ 69);
`see also id. at 38–39 (citing Ex. 1006, 8:56–59 (“Using its CVT and control
`system, Xing practiced method 200, which allowed ‘for a work vehicle 10 to
`
`
`
`7 Petitioner provides similar detailed analysis, supported by the testimony o