Case 1:17-cv-00770-JDW Document 439-11 Filed 07/31/24 Page 1 of 83 PageID #: 39991
`Case 1:17-cv-00770-JDW Document 439-11 Filed 07/31/24 Page 1 of 83 PagelD #: 39991
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`EXHIBIT 11
`EXHIBIT 11
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`Case 1:17-cv-00770-JDW Document 439-11 Filed 07/31/24 Page 1 of 83 PagelD #: 39991
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`EXHIBIT 11
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`Trials@uspto.gov
`Paper 27
`571-272-7822
`Entered: March 5, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WIRTGEN AMERICA, INC.,
`Petitioner,
`v.
`CATERPILLAR INC.,
`Patent Owner.
`
`IPR2022-01394
`Patent 7,523,995 B2
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`Before BARRY L. GROSSMAN, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`INTRODUCTION
`I.
`Wirtgen America, Inc. (“Petitioner”), filed a Petition requesting inter
`partes review of claims 18, 21–35, 45, and 49–63 (the “Challenged Claims”)
`of U.S. Patent No. 7,523,995 B2 (Ex. 1001, the “’995 patent”). Paper 2
`(“Pet.”), 1. 1 The ’995 patent is owned by Caterpillar Inc. (“Patent Owner”).
`Paper 4, 1.
`For the reasons provided below, we conclude that Petitioner has
`proven, by a preponderance of the evidence, that claims 18, 21–29, and
`31–35, are unpatentable. We conclude that Petitioner has not proven, by a
`preponderance of the evidence, that claims 30, 45, and 49–63 are
`unpatentable.
`Procedural History
`A.
`Upon review of the Petition, Preliminary Patent Owner Response
`(Paper 7), and evidence in the record, we instituted an inter partes review
`proceeding on all challenges in the Petition. Paper 9 (“Inst. Dec.”); see
`37 C.F.R. § 42.108(a) (2023) (“When instituting inter partes review, the
`Board will authorize the review to proceed on all of the challenged claims
`and on all grounds of unpatentability asserted for each claim.”).
`Patent Owner filed a Response to the Petition. Paper 14 (“PO
`Resp.”). Petitioner filed a Reply to the Patent Owner Response. Paper 18
`(Pet. Reply”). Patent Owner filed a Sur-reply to the Reply. Paper 22 (“PO
`Sur-reply”).
`
`
`1 Petitioner challenges claims 1–15, 17–33, 35–42, 44–61, and 63 of the
`’995 patent in IPR2022-01395. We issue a Final Written Decision in that
`proceeding concurrently with this Decision.
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`2
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` An oral hearing was held on December 11, 2023, and a transcript is
`included in the record. Paper 26 (“Tr.”).
`Real Parties-in-Interest
`B.
`Petitioner identifies Wirtgen America, Inc. and Wirtgen GmbH as the
`real parties-in-interest. Pet. 87. Patent Owner identifies Caterpillar Inc. as
`the real party-in-interest. Paper 4, 1.
`Related Matters
`C.
`The parties each identify the following district court litigation as a
`matter related to the ’995 patent: Wirtgen America Inc. v. Caterpillar Inc.,
`Case No. 1:17-cv-00770 (D. Del.). Pet. 87; Paper 4, 1. Patent Owner also
`identifies the following inter partes review cases as matters related to the
`’995 patent: IPR2022-01395, IPR2022-01396, and IPR2022-01397.
`Paper 4, 1.
`The ’995 Patent
`D.
`The ’995 patent, titled “Milling Machine,” issued on April 28, 2009,
`from application number 11/180,688. Ex. 1001, codes (54), (45), (21). The
`’995 patent ultimately claims priority to a foreign application, Italian Patent
`Application No. TO2004A0499, filed on July 15, 2004. Id. at code (30).
`The ’995 patent relates to “work machines for the treatment of
`roadway surfaces, and more particularly to a road planer or milling
`machine.” Ex. 1001, 1:5–6. Figure 1 is illustrative and is reproduced below.
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`Figure 1 of the ’995 patent depicts a top plan view of a self-propelled work
`machine. Ex. 1001, 3:26–28, 3:43–44, Fig. 1. As shown, self-propelled
`work machine 10 includes machine frame 12 supportable by front ground
`engaging units 14 and 16, and rear ground engaging units 18 and 20. Id.
`at 3:43–48. “[R]ight rear ground engaging unit 20 . . . may be pivotable
`between a projecting position as shown in solid lines in F[igure] 1 and a
`retracted position in which the one ground engaging unit 20 is positioned
`within the frame 12 as indicated by the recess 22 shown in hidden lines.” Id.
`at 3:51–56.
`Figures 2 through 4 illustrate an exemplary embodiment of the ’995
`patent. Ex. 1001, Figs. 2–4; see id. at 4:38–44. Figure 2 is reproduced
`below.
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`Figure 2 of the ’995 patent depicts a partially sectioned longitudinal view of
`a detail of the work machine shown in Figure 1, referred to as “a cold
`planer.” Ex. 1001, 3:29–31, Fig. 2. As shown, “work machine 10 includes
`. . . support device 40 connected between the machine frame 12 and the one
`ground engaging unit 20”; “first actuator 42 is connected to the support
`device 40 and is adapted to move the one ground engaging unit 20 between
`the projecting . . . and the retracted position . . . relative to . . . frame 12”;
`“second actuator 44 is associated with . . . support device 40 and . . . adapted
`to maintain the same rotational direction of the one ground engaging unit 20
`in each of the projecting and retracted positions”; “controller 32 . . . is
`adapted to coordinate the actuation of . . . actuators 42, 44”; “support
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`device 40 includes . . . lifting column 46 adapted to controllably raise and
`lower the associated connected ground engaging unit 20 relative to the
`machine frame 12”; and “second actuator 44 is connected to . . . lifting
`column 46 and . . . adapted to cause . . . a portion of . . . lifting column 46 to
`rotate about . . . lifting column axis 48,” which “is oriented generally
`vertically relative to . . . work machine 12.” Id. at 4:38–60.
`“When flush milling is desired, for example, along a curb or close to a
`wall, the operator may choose to move the one ground engaging unit 20 to
`the retracted position relative to the machine frame 12.” Ex. 1001, 7:56–59.
`Figure 3 is illustrative and reproduced below.
`
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`Figure 3 of the ’995 patent depicts “a partially sectioned top plan view of the
`apparatus of F[igure] 2, with the ground engaging unit arranged in a
`retracted position relative to the frame.” Id. at 3:32–34, Fig. 3.
`“Absent conditions calling for flush milling, the work machine 10
`may be configured as shown in F[igure] 4, with the one ground engaging
`unit 20 in the projecting or outboard position relative to the machine
`frame 12.” Ex. 1001, 7:49–52. Figure 4 is illustrative and is reproduced
`below.
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`Figure 4 of the ’995 patent depicts “a partially sectioned top plan view of the
`apparatus of F[igure] 2, with the ground engaging unit arranged in a
`protracting position relative to the frame.” Id. at 3:35–37.
`Challenged Claims
`E.
`The Petition challenges claims 18, 21–35, 45, and 49–63. Pet. 1.
`Below, we reproduce claims 18 and 45, which are the independent claims
`being challenged.
`18. A self-propelled machine, comprising:
`a machine frame supportable by a plurality of ground
`engaging units;
`a support device connected between said machine frame
`and at least one of said ground engaging units, said support
`device including a lifting column having a lifting column axis
`and being adapted to controllably raise and lower said at least
`one ground engaging unit about said axis relative to said machine
`frame;
`a first actuator connected to said support device and
`adapted to move said at least one ground engaging unit between
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`projecting and retracted positions relative to said machine frame;
`and
`
`a second actuator connected to said lifting column and
`adapted to cause at least a portion of said lifting column to rotate
`about said lifting column axis relative to said machine frame,
`said second actuator being positioned at a location linearly
`spaced apart from said first actuator along said lifting column
`axis.
`Ex. 1001, 11:34–52.
`45. A self-propelled machine, comprising:
`a machine frame supportable by a plurality of ground
`engaging units;
`support means for supporting said machine frame, said
`support means being connected to said machine frame and
`including a generally vertically oriented lifting column having a
`lifting column axis and being connected to at least one of said
`ground engaging units;
`first actuatable means for moving said at least one ground
`engaging unit between projecting and retracted positions relative
`to said machine frame;
`second actuatable means for rotating said at least one
`ground engaging unit to maintain the same rotational direction of
`said at least one ground engaging unit in each of said projecting
`and retracted positions, said second actuatable means being
`positioned at a location spaced apart from said first actuatable
`means along an axis of said lifting column; and controller means
`for coordinating the actuation of said first and second actuatable
`means.
`Id. at 14:31–50.
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`Prior Art and Instituted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following challenges:
`Claim(s) Challenged 35 U.S.C. §2
`18, 29–31
`103(a)
`21–27, 32, 35, 45, 49–
`103(a)
`55, 57–60, 63
`33
`103(a)
`61
`103(a)
`28, 56
`103(a)
`34
`103(a)
`62
`103(a)
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`References/Basis
`Volpe, 3 Piccoli4
`Volpe, Piccoli, Skotnikov5
`Volpe, Piccoli, Dubay6
`Volpe, Piccoli, Skotnikov
`Volpe, Piccoli, Skotnikov,
`McColl7
`Volpe, Piccoli, McCutcheon8
`Volpe, Piccoli, Skotnikov,
`McCutcheon
`
`Pet. 20.
`Petitioner relies on the declaration testimony of Mr. Cameron Orr in
`support of these challenges. Exs. 1003, 1040; see also Ex. 1004 (providing
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011, with changes
`to 35 U.S.C. §§ 102 and 103 taking effect March 16, 2013. Because neither
`party 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.
`3 Volpe SF 100 T4 Operator’s Manual; published Oct. 1993 (Ex. 1005,
`“Volpe”).
`4 Piccoli, US 2003/0180092 A1; published Sept. 25, 2003 (Ex. 1006,
`“Piccoli”).
`5 Skotnikov et al., US 6,311,795 B1; issued Nov. 6, 2001 (Ex. 1008,
`“Skotnikov”).
`6 Dubay et al., WO 02/103117 A1; published Dec. 27, 2002 (Ex. 1007,
`“Dubay”).
`7 McColl, US 4,237,994; issued Dec. 9, 1980 (Ex. 1010, “McColl”).
`8 McCutcheon, US 4,566,553; issued Jan. 28, 1986 (Ex. 1013,
`“McCutcheon”).
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`Mr. Orr’s curriculum vitae). Patent Owner relies on declaration testimony of
`Dr. Richard Klopp to support its responsive arguments. Ex. 2004; see also
`Ex. 2005 (providing Dr. Klopp’s curriculum vitae).
`The following subsections provide brief descriptions of the asserted
`prior art references.
`Volpe (Ex. 1005)
`1.
`Volpe is an operating manual for a cold planer machine. Ex. 1005, 2,
`3, 6. Part of Figure BB-1 of Volpe is reproduced below.
`
`
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`This part of Figure BB-1 depicts a top plan view of the cold planer.
`Ex. 1005, 65, Fig. BB-1. As shown, the cold planer includes a frame,
`steering wheel, two front wheels and two rear wheels, as well as sliding
`supports for the left and right rear wheels. See id. Figure AH-7 of Volpe is
`reproduced below.
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`Figure AH-7 of Volpe is a visual aid for positioning the right rear wheel. Id.
`at 51. Volpe describes that “[i]f it is necessary to work up against pavement
`[curbs], walls or other obstacles, the rear right wheel can be positioned so
`that it is flush with the profile of the cutter drum.” Id. “In order to bring the
`wheel to this position,” Volpe instructs the operator to “proceed as follows:”
`a) Place a wooden spacer between the ground and the cutter
`drum.
`b) Lower the right hand side of the frame until the wheel is
`raised from the ground.
`c) Screw the handle (1) onto the pin (2), remove the safety
`spring (3) and then remove the pin (2).
`d) Swing the support (4) towards the frame until the pin hole
`(2) is aligned with the hole (5).
`e) Insert the pin (2), insert the safety spring (3); unscrew the
`handle (1) and return it to the tool box.
`f) Lower the wheel and raise the frame; the vehicle is now
`ready for work.
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`Id. Volpe then explains that “[t]o return the wheel to its outside position,
`reverse the above procedure but this time swinging the wheel out from its
`position flush with the cutter drum.” Id.
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`Part of Figure D-4 of Volpe is reproduced below.
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`This part of Figure D-4 depicts a side view diagram of the Volpe cold planer
`machine with labels identifying the machine’s electrical connectors and
`main components. Ex. 1005, 100–101. Lastly, Volpe also describes a
`hydraulic oil tank and hydraulic transmission system. Id. at 27.
`Piccoli (Ex. 1006)
`2.
`Piccoli, titled “Device for Forming Tight Radius Curbs and Gutters
`with a Paving Machine,” published September 25, 2003. Ex. 1006, codes
`(54), (43). Piccoli “relates . . . to a system and method to allow a paving
`machine to form tight radii in continuous extrusions.” Id. ¶ 2. Figure 1 of
`Piccoli is reproduced below.
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`Figure 1 of Piccoli depicts a typical paving machine according to one
`embodiment. Ex. 1006 ¶ 31. “Paving machine 20 includes a main frame 22
`supported on vertically adjustable upright leg assemblies,” preferably “a first
`front leg assembly 24, a second front leg assembly (not seen), and a rear leg
`assembly 28,” where paving machine 20 may be self-propelled by a
`moveable ground engaging track mounted to each leg assembly, “the first
`front track 49 being mounted to a hydraulic power-swing leg.” Id. ¶¶ 31, 38.
`Piccoli also describes its machine as a “a typical curb-forming machine”
`whose steering mechanism may be modified “to allow for much sharper
`turns and tighter radii on continuous extrusions.” Id. ¶¶ 37, 42. For
`example, Piccoli describes that the positioning of leg assembly 24’s leg 50
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`“in an offset operating position . . . is desirable when avoiding obstructions
`the front track 49 would have encountered if it was in its normal position.”
`Id. ¶ 47; see also id. at Fig. 1 (depicting items 24, 50).
`Figure 3 of Piccoli is reproduced below.
`
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`Figure 3 of Piccoli depicts the mounting of the front leg assembly. Ex. 1006
`¶ 14. As shown, Piccoli shift cylinder 76 is provided for repositioning leg
`assembly 24 relative to the frame, and steering cylinder 48 is provided for
`rotating or otherwise positioning ground engaging track 49. Id., Fig. 3,
`¶¶ 40–42; see also id., at Figs. 2, 4a, 4b. Piccoli also describes a hydraulic
`system including a hydraulic circuit 90 to direct hydraulic fluid to the
`steering cylinder 48 and shift cylinder 76 to position leg 50 and track 49. Id.
`¶¶ 49, 50, 54, 57, Figs. 6, 8, 10, 13.
`Skotnikov (Ex. 1008)
`3.
`Skotnikov, titled “Work Vehicle Steering and Suspension System,”
`issued November 6, 2001. Ex. 1008, codes (54), (45). Skotnikov “relates
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`. . . to a work vehicle steering system for off-road work vehicles.” Id.
`at 1:5–8. Figure 1 of Skotnikov is reproduced below.
`
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`Figure 1 of Skotnikov is a side view of a chassis of a work vehicle having a
`steering and suspension system. Ex. 1008, 2:22–24. As shown,
`“chassis 100 includes a frame 106 coupled to four wheel assemblies 108 via
`four suspension/steering coupling assemblies 110.” Id. at 2:57–59.
`Coupling assembly 110 includes rotatable assemblies 114, 115, and 116. Id.
`at 3:17–18. Rotatable assemblies 114 and 115 can include helical rotary
`actuators, such as a hydraulic cylinder, and can be configured to rotate an
`axle or shaft within sleeves 140 and 146, respectively. Id. at 3:35–49,
`3:53–55.
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`Figure 6 of Skotnikov is reproduced below.
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`Figure 6 of Skotnikov depicts the control circuit for the steering and
`suspension system. Ex. 1008, 2:34–35. As shown, control
`circuit 164—through the use of a relay interface 172, sensors 152, 154, 155,
`156, 160, 162, 166, 168, and 197 and actuator solenoids 174, 176, 182, and
`184—is operative to provide control signals to rotatable assemblies 114 and
`115 in order to steer wheel assemblies 108. Id. at 4:46–48, 4:62–67. In one
`embodiment, “[c]ontrol circuit 164 is configured to lower frame 106 via
`coupling assemblies 110 by enabling solenoid 182,” which “actuates
`valve 185 to remove hydraulic oil from actuator 158,” which then “retracts,
`providing a decreased distance between sleeve 140 and lever 123b to
`move frame 106 downward relative to wheel 108.” Id. at 7:52–57.
`Control circuit 164 may also be configured to provide control signals
`to rotatable assemblies 114 and 115 to adjust the distance between
`wheels 108a, 108b, 108c, and 108d. Ex. 1008, 5:2–4. This wheel width
`adjustment can be seen in Figures 2 and 3, which are reproduced below.
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`Figures 2 and 3 of Skotnikov depict wheel assemblies 108 with narrow and
`wider widths, respectively. Ex. 1008, 5:19–21.
`Dubay (Ex. 1007)
`4.
`Dubay, titled “Milling Machine with Re-Entering Back Wheels,”
`published December 27, 2002 from an international application,
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`PCT/EP02/04638, filed April 26, 2002. Ex. 1007, codes (54), (43), (21),
`(22).
`In the background discussion of Dubay, Dubay references “[a]
`prospectus entitled ‘Bitelli Volpe SF 100 T4M deep-cut cold planer for
`asphalt and concrete’” and states that the prospectus “describes a work
`machine comprising a frame which is supported by four wheels, a pair of
`oppositely arranged front wheels and a pair of oppositely arranged rear
`wheels.” Ex. 1007, 1:14–16. Dubay further states that, in the prospectus,
`“[o]ne of the rear wheels is adapted to raise and lower the frame relative to
`the respective rear wheel,” and “the operator hydraulically lowers the frame
`with respect to the rear wheel[;] [i].e.[,] a hydraulic cylinder located inside
`the lifting column provides for this lowering movement.” Id. at 1:16–18,
`1:28–2:2. Dubay additionally states that the machine’s support arm is
`“pivotally connected to the frame,” thereby “allow[ing] for movement
`between the two operating positions.” Id. at 1:22–25.
`
`Dubay’s “invention relates . . . to a planer or milling machine for
`asphalt and concrete.” Ex. 1007, 1:7–9. Figure 4 of Dubay is reproduced
`below.
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`Figure 4 of Dubay is a schematic vertical sectional view of a detail of a cold
`planer. Id. at 4:11–14, 4:17. As shown, actuator 50—preferably a hydraulic
`jack—“is mounted in the seat 131 provided in the support arm 11,” and
`“actuator 50 is used for blocking a rotary movement of the support arm 11
`with respect to the frame 2” through stem 51 that “can be inserted in to
`holes 52, 52a . . . in the frame 2 . . . to block or lock the support arm 11.” Id.
`at 9:19–26. According to Dubay, “locking the articulation apparatus 10 in
`this manner will also lock or block the wheel 5 . . . in the retracted
`position 70 and in the projecting position 60 relative to the frame 2,
`respectively.” Id. at 9:26–29.
`5. McColl (Ex. 1010)
`McColl, titled “Independent Steering and Propulsion System for Off
`Road Vehicle,” issued December 9, 1980. Ex. 1010, codes (54), (45).
`McColl “relates to self-propelled vehicles used primarily to transport long
`loads across roadless terrain.” Id. at 1:15–17. McColl describes a vehicle
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`including “modular front and rear wheel assemblies,” each having “an
`electrical or hydraulic actuator . . . to impart individually controlled steering
`movements to the particular wheel.” Id. at 1:29–30, 1:62–64. McColl’s
`vehicle further includes a “steering control system” with “a turn angle sensor
`. . . incorporated in the steering linkage for each wheel to continuously
`generate a signal proportional to the turning angle of such wheel.” Id.
`at 6:29–32, 6:34–35. Notably, McColl’s control system includes “a
`microprocessor 204 to control respectively the turn angle of the vehicle,”
`where “sensor signals” “respectively proportional to the rotational velocity
`of the wheel and to the angle of turn of the particular wheel” “are inputs to
`[the] microprocessor.” Id. at 1:64–1:68, 6:34–43. McColl also describes
`that its “microprocessor can be programmed to cause the vehicle to turn
`according to the Ackerman[n] principle.” Id. at 2:18–24; see also id.
`at 7:12–24, 8:53–62.
`6. McCutcheon (Ex. 1013)
`McCutcheon, titled “Agricultural Work Vehicle,” issued January 28,
`1986. Ex. 1013, codes (54), (45). McCutcheon relates to “an agricultural
`work vehicle having an extensible and articulate load supportive frame
`which is particularly adapted to single-handed operations.” Id. at 1:5–8.
`Figure 1 of McCutcheon is reproduced below.
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`Figure 1 of McCutcheon depicts a perspective view of an agricultural work
`vehicle. Id. at 2:46–47, Fig. 1. As shown, agricultural work vehicle 30 for
`endwise or broadside travel 62, 63 includes an extensible load supportive
`frame 31, an operator’s cab 33 mounted thereon, individual panels 32 (some
`of which are overlapped at 40, 40’), and wheel assembles 41, 41’, 42, and
`42’. Id. at 3:37–49, 4:54–64.
`
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`Figure 7 of McCutcheon is reproduced below.
`
`
`Figure 7 of McCutcheon depicts a fragmentary cross-sectional view of a
`wheel assembly usable on the vehicle shown in Figure 1. Ex. 1013,
`2:60–62. As shown, each “wheel assembly 80 . . . comprise[s] a hollow
`wheel strut 81” and “a hydraulically driven steering motor 85 that is
`remotely controllable from the cab” of the vehicle. Id. at 6:5–16. Motor 85
`provides “[s]teering control of the strut 81” through the “control of solenoid
`valves,” which apply “hydraulic fluid . . . to drive the motor 85.” Id.
`at 6:14–23. “Attached to the motor 85 is a wheel lock solenoid 88” and “a
`slidable plunger 90.” Id. at 6:24–26. “A series of apertures 92 are formed in
`the strut 81 in line with the plunger 90 and are engagable thereby under
`remote control from the cab 33 to lock the assembly 80 into predetermined
`positions.” Id. at 6:26–29.
`
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`II. ANALYSIS OF PETITIONER’S CHALLENGES
`Applicable Law
`A.
`Petitioner’s asserted grounds of unpatentability are based on
`obviousness under 35 U.S.C. § 103.
`Section 103(a) 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, objective evidence,9 such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co., 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
`
`
`9 Neither party directs us to any objective evidence of non-obviousness.
`
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`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.”
`Id.
`
`“[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); cf. Elekta Ltd. v. ZAP Surgical Sys., Inc.,
`81 F.4th 1368, 1374 (Fed. Cir. 2023) (“Whether a skilled artisan would have
`been motivated to combine references or would have had a reasonable
`expectation of success in combining references are questions of fact . . . .”).
`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 Int’l Co., 550 U.S. at 421.
`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). Petitioner contends that a person having
`ordinary skill in the art “in the technical field of the ’995 patent (mobile
`construction machines) would have had knowledge of the technical literature
`concerning machine design, including hydraulic and mechanical systems and
`their use to steer and position wheels or tracks, before July 2004.” Pet. 15
`(referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person
`having ordinary skill in the art
`would typically have had: (i) a bachelor’s degree (or equivalent)
`in mechanical engineering (or a similar field) and at least two
`years of experience working on mobile construction machine
`
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`design (or in a similar field); or (ii) seven years of experience
`working on mobile construction machine design (or in a similar
`field).
`Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address
`the level of ordinary skill in the art in its Response. Dr. Klopp states
`that “[w]hile I do not opine on the correctness of [Petitioner’s]
`description [of the level of ordinary skill], I apply [Petitioner’s]
`description of a person of ordinary skill in the art for the purposes of
`my declaration.” Ex. 2004 ¶ 26.
`Based on the prior art, the sophistication of the technology at issue,
`and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed
`definition of the level of ordinary skill. We determine that this definition is
`consistent with the prior art of record and the skill reflected in the
`Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a
`mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile
`construction machine design).
`C. Claim Construction
`In inter partes reviews, we interpret a 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, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`Independent claim 45 uses “means-plus-function” language, reciting
`several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6. 10
`
`10 We cite to the pre-AIA version of the statute applicable to the Challenged
`Claims.
`
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`Means-plus-function claiming occurs when a claim term is drafted in a
`manner that invokes 35 U.S.C. § 112 ¶ 6, which states:
`An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and
`equivalents thereof.
`See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1347 (Fed. Cir. 2015) (en banc).
`The parties do not dispute that § 112 ¶ 6 applies to the recited
`means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO
`Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not
`satisfy the requirements for construing certain means-plus-function terms).
`Where claim language may be construed according to 35 U.S.C.
`§ 112(f) (or its predecessor, § 112 ¶ 6), a petitioner must provide a
`construction that includes both the claimed function and the specific portions
`of the specification that describe the structure, material, or acts
`corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3).
`Petitioner provides specific constructions and cites allegedly corresponding
`structure and function in the Specification for some, but not all, of the
`“means for” clauses in challenged claim 45. Pet. 16–20. In particular,
`Petitioner proposes specific constructions for claim 45’s “support means,”
`“first actuatable means,” and “second actuatable means,” but does not
`propose a specific construction for claim 45’s “controller means.” See id.
`Significant to our analysis of Petitioner’s patentability positions,
`Petitioner contends that the function associated with the second actuatable
`means is “rotating said at least one ground engaging unit to maintain the
`
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`same ro
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