Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 1 of 80 PageID #: 40196
`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 1 of 80 PagelD #: 40196
`
`
`
`
`EXHIBIT 16
`EXHIBIT 16
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 2 of 80 PageID #: 40197
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`WIRTGEN AMERICA, INC. and WIRTGEN GMBH
`Petitioners
`
`v.
`
`CATERPILLAR PAVING PRODUCTS INC.
`Patent Owner
`
`_____________________
`
`Case IPR2018-01201
`Patent No. 7,140,693
`_____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,140,693
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 3 of 80 PageID #: 40198
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`C.
`
`PRELIMINARY STATEMENT ..................................................................... 1
`BACKGROUND IN THE ART ...................................................................... 3
`A.
`The need to mill up to the edge of a road, even when an adjacent
`obstacle is present, led to the use of swing legs in road milling
`machines. ............................................................................................... 4
`The prior art used actuators for pivoting swing legs to address known
`disadvantages of manually pivoted swing legs. .................................... 7
`The prior art provided solutions to maintain the wheel’s orientation
`while pivoting and to otherwise steer the wheel. .................................. 9
`III. THE ’693 PATENT .......................................................................................13
`IV. LEVEL OF ORDINARY SKILL IN THE ART ...........................................17
`V.
`CLAIM CONSTRUCTION ..........................................................................17
`VI. SUMMARY OF GROUNDS ........................................................................18
`A.
`The Volpe Manual is a Prior Art Publication ......................................19
`VII. CLAIMS 1-3, 5, 6, 15-19, 24-28, 36, AND 38 OF THE ’693 PATENT ARE
`UNPATENTABLE UNDER § 103 ...............................................................23
`A. Ground 1: Claims 1, 17-19, 24, and 25 would have been obvious over
`the Volpe Manual in view of Ulrich. ..................................................23
`1. Claim 1 would have been obvious over the Volpe Manual in
`view of Ulrich. ...........................................................................25
`i. A work machine comprising ............................................................. 25
`ii. A frame supported by a pair of front wheels or tracks and a pair of
`rear wheels or tracks, at least one of the wheels or tracks being
`associated with a respective lifting column adapted to raise and lower
`said frame relative to the respective wheel or track .......................... 26
`iii. A work tool supported by said frame ................................................ 30
`iv. A drive mechanism adapted to rotate said work tool and at least one
`of said wheels or tracks ..................................................................... 30
`v. An articulation apparatus adapted to pivotally move said one of said
`wheels or tracks associated with said lifting column between a
`projecting position and a retracted position relative to said frame, said
`articulation apparatus including ........................................................ 31
`vi. A support arm pivotally connecting said frame to the lifting column
`associated with said one wheel or track ............................................ 34
`
`
`
`- i -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 4 of 80 PageID #: 40199
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`B.
`
`C.
`
`vii. A first actuator connected to said support arm and operable to pivot
`said support arm relative to said frame ............................................. 35
`viii. A second actuator adapted to rotate said at least one wheel or track
`about a vertical axis ........................................................................... 37
`2. Claim 17 would have been obvious over the Volpe Manual in
`view of Ulrich. ...........................................................................40
`3. Claim 18 would have been obvious over the Volpe Manual in
`view of Ulrich. ...........................................................................45
`4. Claim 19 would have been obvious over the Volpe Manual in
`view of Ulrich. ...........................................................................47
`5. Claims 24 and 25 would have been obvious over the Volpe
`Manual in view of Ulrich. .........................................................49
`Ground 2: Claims 15, 16, 26, 27, 36, and 38 would have been obvious
`over the Volpe Manual in view of Ulrich and Bitelli ’088. ................53
`1. Claims 15 and 16 would have been obvious over the Volpe
`Manual in view of Ulrich and Bitelli ’088. ...............................53
`2. Claim 36 would have been obvious over the Volpe Manual in
`view of Ulrich and Bitelli ’088. ................................................57
`3. Claims 26 and 27 would have been obvious over the Volpe
`Manual in view of Ulrich and Bitelli ’088. ...............................57
`4. Claim 38 would have been obvious over the Volpe Manual in
`view of Ulrich and Bitelli ’088. ................................................58
`Ground 3: Claims 2, 3, 5, 6, and 19 would have been obvious over the
`Volpe Manual in view of Ulrich and Busley. .....................................59
`1. Claim 2 would have been obvious over the Volpe Manual in
`view of Ulrich and Busley. ........................................................59
`2. Claim 3 would have been obvious over the Volpe Manual in
`view of Ulrich and Busley. ........................................................62
`3. Claim 5 would have been obvious over the Volpe Manual in
`view of Ulrich and Busley. ........................................................63
`4. Claim 6 would have been obvious over the Volpe Manual in
`view of Ulrich and Busley. ........................................................64
`5. Claim 19 would have been obvious over the Volpe Manual in
`view of Ulrich and Busley. ........................................................65
`
`
`
`- ii -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 5 of 80 PageID #: 40200
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`D. Ground 4: Claim 28 would have been obvious over the Volpe Manual
`in view of Ulrich and Bitelli ’037. ......................................................67
`1. Claim 28 would have been obvious over the Volpe Manual in
`view of Ulrich and Bitelli ’037. ................................................67
`Objective indicia do not support patentability. ...................................69
`E.
`VIII. MANDATORY NOTICES ...........................................................................69
`A.
`Real Parties-in-Interest ........................................................................69
`B.
`Related Matters ....................................................................................69
`C.
`Lead and Back-Up Counsel and Service Information ........................70
`IX. GROUNDS FOR STANDING ......................................................................71
`X.
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED ............................................................................................72
`
`
`
`
`
`
`
`
`
`- iii -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 6 of 80 PageID #: 40201
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,140,693
`U.S. Patent No. 7,140,693 file history
`Declaration of John W. Arnold, P.E.
`Curriculum Vitae of John Arnold, P.E.
`Volpe SF 100 T4 Operating Instruction Book (“Volpe Manual”)
`U.S. Patent No. 3,633,292 to Ulrich
`EP 1001088A2 to Bitelli (“Bitelli ’088”)
`WO 97/42377 to Busley
`U.S. Patent No. 4,966,418 to Wirtgen
`U.S. Patent No. 3,843,274 to Gutman et al.
`U.S. Patent No. 6,106,073 to Simons et al.
`EP 1039037A2 to Bitelli (“Bitelli ’037”)
`U.S. Patent No. 6,311,795 to Skotnikov et al.
`Declaration of Ray Hogan
`Declaration of Charles Randall Henderson
`Declaration of William Zehender
`Sutter County Records for the Volpe SF 100 T4 Milling Machine
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`
`
`
`
`- iv -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 7 of 80 PageID #: 40202
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`
`Petitioners Wirtgen America, Inc. and Wirtgen GmbH (“Wirtgen”) request
`
`Inter Partes Review and cancellation of claims 1-3, 5, 6, 15-19, 24-28, 36, and 38
`
`of U.S. Patent No. 7,140,693 (“the ’693 patent”), purportedly assigned to
`
`Caterpillar Paving Products Inc. (“Caterpillar”).
`
`I. PRELIMINARY STATEMENT
`There is nothing new claimed in the ’693 patent. The ’693 patent claims a
`
`work machine, such as a milling machine, that includes an articulation apparatus to
`
`move its wheel or track between a projecting position and a retracted position
`
`relative to the machine’s frame. The claimed articulation apparatus includes a
`
`support arm, a first actuator to pivot the support arm, and a second actuator to
`
`rotate the wheel. The ’693 patent also claims the associated method of controlling
`
`the position of the wheel with the two actuators.
`
`But wheels that can move between projecting and retracted positions were
`
`not new on milling machines, a fact that Caterpillar readily concedes in the ’693
`
`patent’s specification and in a German nullity proceeding against a European
`
`patent disclosing retracting wheels. Indeed, many such “re-entering wheels” were
`
`well-known in the art and had long been used on milling machines.
`
`The reasons were well-understood and simple: 1) projecting the wheel
`
`increases the machine’s stability by providing a wider stance; and 2) retracting the
`
`
`
`- 1 -
`
`
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 8 of 80 PageID #: 40203
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`wheel inwards allows a milling machine to mill close to barriers (such as jersey
`
`walls or curbs), which is frequently required on jobsites.
`
`The art also appreciated that there were two general approaches to designing
`
`such a re-entering wheel: 1) parallelogram-based apparatuses; and 2) single-arm
`
`apparatuses. Both designs were well-known and used on commercial milling
`
`machines in the prior art. Artisans also appreciated that either design could be
`
`pivoted automatically with hydraulic actuators. Accordingly, there is nothing new
`
`in the ’693 patent because its purported invention merely adds two hydraulic
`
`actuators to a single-arm re-entering wheel apparatus to automate: 1) pivoting the
`
`leg; and 2) orienting the wheel. Indeed, the claimed design was well-known, well-
`
`understood, and appreciated in the art because it relieved the operator of the burden
`
`of laboriously and manually serving the role of both actuators.
`
`The challenged dependent claims fare no better than the broadest claims.
`
`Each simply adds one or more trivial elements that were well-known in the milling
`
`machine prior art for exactly the same purpose for which the claims recite it. As
`
`described in detail below, the alleged inventions recited in the challenged claims
`
`could hardly have been more obvious over the cited prior art. Wirtgen requests that
`
`the Board institute trial and cancel claims 1-3, 5, 6, 15-19, 24-28, 36, and 38 of the
`
`’693 patent as obvious. Wirtgen has also submitted an accompanying Declaration
`
`of John W. Arnold, P.E., a technical expert with 27 years of experience in the
`
`
`- 2 -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 9 of 80 PageID #: 40204
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`design and development of mobile equipment, including construction and mining
`
`equipment. (Ex. 1003, Arnold Decl., ¶¶3, 16-23.)
`
`II. BACKGROUND IN THE ART
`Breaking up road surfaces before depositing a new layer of material has
`
`been an important aspect of road construction for decades. (Arnold Decl., ¶28.)
`
`Machines for breaking up road surfaces were well-known and well-developed by
`
`the 1990s. (See, e.g., Ex. 1009, Wirtgen, 1:5-6, 11-12; Ex. 1005, Volpe Manual, 2;
`
`Ex. 1010, Gutman, Abstract, 1:5-8, 2:24-31; Ex. 1011, Simons, 1:5-14; Ex. 1006,
`
`Ulrich, 1:20-21; Ex. 1007, Bitelli ’088, ¶0002; Ex. 1008, Busley, 1:1-2; Ex. 1012,
`
`Bitelli ’037, ¶0001; Arnold Decl., ¶¶28-31.)
`
`These machines (known as cold planers, road milling machines, or
`
`scarifying machines) typically included “a frame made of heavy-duty metal
`
`bodywork, provided with a ripper drum” (also known as a milling or cutter drum).
`
`(Bitelli ’037, ¶0004; Bitelli ’088, ¶0003; Volpe Manual, 31-32; Ulrich, 1:26-28,
`
`4:1-6; Busley, 6:24-25, 7:17-18; Wirtgen, 1:5-10; Gutman, 2:24-26; Simons, 3:35-
`
`42; Arnold Decl., ¶32.) To facilitate adjusting the cutting depth, road milling
`
`machines also included lifting columns. (Volpe Manual, 31-32, 65; Bitelli ’088,
`
`¶¶0006, 0023; Busley, 7:21-8:2; Gutman, FIG. 1; Simons, 3:39-42; Bitelli ’037,
`
`¶0007; Arnold Decl., ¶¶33-34.) An image of an exemplary road milling machine
`
`from the prior art is reproduced below.
`
`
`
`
`
`- 3 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 10 of 80 PageID #: 40205
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`(Bitelli ’088, FIG. 1.)
`
`
`
` A.
`
`The need to mill up to the edge of a road, even when an adjacent
`obstacle is present, led to the use of swing legs in road milling
`machines.
`
`The prior art recognized a benefit in locating a milling machine’s rear wheel
`
`to the side of the machine, for example to “allow[] the improvement of the weight
`
`distribution” because milling machines are notoriously top heavy. (Bitelli ’088,
`
`¶0008; Bitelli ’037, ¶0008; Wirtgen, 1:12-23, 2:6-16; Gutman, 3:49-51; Volpe
`
`Manual, 8; Arnold Decl., ¶35.) A broad stance between a milling machine’s rear
`
`wheels was well-understood to improve stability. (Arnold Decl., ¶35.)
`
`However, the prior art recognized a need to be able to mill “up against
`
`pavement [cu]rbs, walls or other obstacles.” (Volpe Manual, 51; Bitelli ’088,
`
`¶0008; Wirtgen, 1:27-39; Simons, 1:39-45; Bitelli ’037, ¶0008; Arnold Decl., ¶36.)
`
`
`
`
`
`
`- 4 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 11 of 80 PageID #: 40206
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`The prior art satisfied this need by placing a rear wheel in front of the milling drum
`
`in a retracted position. (Busley, 2:5-10, 8:3-6, FIG. 1; Wirtgen, 2:51-57, FIG. 3;
`
`Simons, 3:43-51, FIGS. 2, 3c; Volpe Manual, 51; Bitelli ’088, ¶0008, FIG. 5;
`
`Bitelli ’037, ¶0008, FIGS. 1, 5; Arnold Decl., ¶36.)
`
`The desire to both: 1) improve stability and weight distribution; and 2) mill
`
`up to the edge of the road, particularly next to obstacles, led to the use of re-
`
`entering wheels (also known as swing legs) on milling machines well before 2001.
`
`(Volpe Manual, 51; Bitelli ’088, ¶0007-0008; Busley, 7:9-16; Wirtgen, 2:6-25;
`
`Simons, 1:31-45; Bitelli ’037; ¶0007; Arnold Decl., ¶37.) These re-entering wheels
`
`can be placed in two positions, as shown in Figures 3 and 5 (reproduced below) of
`
`EP 1001088 A2 to Bitelli (“Bitelli ’088”) (Ex. 1007): (1) a projecting position to
`
`increase stability by widening the machine’s stance; and (2) a retracted position
`
`that allows the machine to mill closer to an adjacent obstacle. (Bitelli ’088, ¶0007-
`
`0008, FIGS. 3, 5; Volpe Manual, 51; Arnold Decl., ¶38.)
`
`
`
`
`
`
`- 5 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 12 of 80 PageID #: 40207
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`(Bitelli ’088, FIGS. 3, 5.)
`
`
`
`Swing legs typically included one or more pivoting support arms that
`
`connected the wheel to the machine frame. (Volpe Manual, 51; Ulrich, FIG. 1;
`
`Bitelli ’088, FIGS. 3, 5; Busley, FIG. 1; Gutman, FIG. 3; Simons, FIGS. 3a-3c;
`
`Bitelli ’037, FIGS. 4-6.) Over time, artisans used a variety of swing leg
`
`configurations, but in each case, they achieved the same basic goals: 1) to project
`
`and retract the wheel or track; and 2) to orient the wheel or track relative to the
`
`machine frame. (Arnold Decl., ¶39.)
`
`
`
`
`
`- 6 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 13 of 80 PageID #: 40208
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
` B.
`
`The prior art used actuators for pivoting swing legs to address
`known disadvantages of manually pivoted swing legs.
`
`One design choice when implementing a swing leg is how to power the
`
`movement between the projecting position and the retracted position. (Arnold
`
`Decl., ¶40.) The Volpe SF 100 T4 Operating Instruction Book (“Volpe Manual”)
`
`(Ex. 1005) disclosed a manual process for moving its re-entering wheel between a
`
`projecting position and a retracted position. (Volpe Manual, 51.) In this manual
`
`process, a human was required to physically move the wheel from one position to
`
`the other. (Arnold Decl., ¶40.) However, the prior art recognized that manual
`
`methods of moving the re-entering wheels, such as the one disclosed in the Volpe
`
`Manual, were “awkward for the operator.” (Bitelli ’088, ¶¶0009-0011; Bitelli ’037,
`
`¶0010; Arnold Decl., ¶40.) For example, the operator had to get out of the machine
`
`and move the heavy leg and wheel by muscle force. (Bitelli ’088, ¶¶0009-0011;
`
`Bitelli ’037, ¶0010; Arnold Decl., ¶40.) As recognized by the prior art, this manual
`
`process was inefficient, inconvenient, and unsafe. (Bitelli ’088, ¶0016; Simons,
`
`1:53-55; Arnold Decl., ¶40.)
`
`To address these disadvantages of manually moving the re-entering wheels,
`
`the prior art taught shifting “of the back wheels from the projecting position to the
`
`re-entering position with respect to the frame…in an automatized way.” (Bitelli
`
`’088, ¶¶0010-0011.) In particular, the prior art repeatedly shows the use of an
`
`
`
`
`
`
`- 7 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 14 of 80 PageID #: 40209
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`extendable actuator to pivot the support arm (or support arms) connecting the
`
`wheel to the machine frame. (See, e.g., Ulrich, 1:44-46, FIG. 2; Bitelli ’088,
`
`¶¶0024-0025, FIGS. 3-5; Gutman, 3:29-41, FIG. 3; Simons, 4:15-21, FIGS. 3a-3c;
`
`Arnold Decl., ¶¶41-43.) For example, Bitelli ’088 used a “hydraulic
`
`cylinder…having a body 16a connected to a flange 17 fixed to a frame 2 and a
`
`movable stem 16b fixed to a bracket 18 belonging to a first arm 11” to shift its
`
`“articulation unit 10 in order to place the respective wheel 5 from a position
`
`laterally projecting from said frame 2 to a position re-entering with respect to the
`
`frame 2 and vice versa.” (Bitelli ’088, ¶¶0024-0025.)
`
`In another example, U.S. Patent No. 3,633,292 to Ulrich (Ulrich) disclosed
`
`“motor means 22 in the form preferably of a hydraulic cylinder or jack for moving
`
`the arm relative to the frame.” (Ulrich, 1:44-46.) Ulrich’s Figure 2 (reproduced
`
`below) illustrates hydraulic cylinder 22 pivotally connected to Ulrich’s frame and
`
`Ulrich’s support arm (either directly or indirectly). (Ulrich, FIG. 2; Arnold Decl.,
`
`¶43.)
`
`
`
`
`
`
`- 8 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 15 of 80 PageID #: 40210
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`
`
`Accordingly, automating the manual process of pivotally moving a swing
`
`leg from a projecting position to a retracted position was well-known and
`
`frequently disclosed in the prior art. (Arnold Decl., ¶44.)
`
` C.
`
`The prior art provided solutions to maintain the wheel’s
`orientation while pivoting and to otherwise steer the wheel.
`
`Long before the priority date of the ’693 patent, artisans appreciated that, in
`
`pivoting a support arm, the wheel’s orientation should be maintained. (Simons,
`
`1:55-61; Arnold Decl., ¶45.) In other words, the wheel should be oriented to the
`
`front of the machine before and after the pivot. (Arnold Decl., ¶45.) Solutions for
`
`maintaining the wheel’s orientation were well-known, whether the swing leg used
`
`a single support arm or a four-bar (parallelogram) approach. (Arnold Decl., ¶45.)
`
`Indeed, in challenging prior art patent EP 0916004 in a German Nullity Action
`
`
`
`
`
`
`- 9 -
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 16 of 80 PageID #: 40211
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`(“the Nullity Action”), Caterpillar admitted that “the objective problem to maintain
`
`the running direction of the support wheel during pivoting…ha[d] long been
`
`resolved for a rotatable lifting column.” (Ex. 1002, ’693 file history, 168-169
`
`(emphasis added).) Caterpillar made these statements before filing the PCT
`
`application leading to the ’693 patent. (’693 file history, 168-169.) Indeed,
`
`Caterpillar characterized this issue of maintaining the orientation of the wheel
`
`through the pivot as “a standard basic problem in kinematics” that artisans would
`
`have known “may be solved likewise by a pivot arm and by a four bar linkage.”
`
`(’693 file history, 169.)
`
`Consistent with Caterpillar’s admission, the prior art illustrated pivot arm
`
`solutions and parallelogram (four bar) linkage solutions. (Arnold Decl., ¶¶45-47.)
`
`For example, Bitelli ’088 used a four bar linkage to maintain its wheel’s
`
`orientation during pivoting. (Bitelli ’088, FIGS. 3-5.) Specifically, the second
`
`support arm keeps the wheel in the proper orientation as the actuator pivots the
`
`support arm. (Bitelli ’088, FIGS. 3-5.) U.S. Patent No. 6,106,073 to Simons et al.
`
`(Ex. 1011) also used the same approach. Simons, FIGS. 3a, 3c.
`
`
`
`
`
`
`- 10 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 17 of 80 PageID #: 40212
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`(Bitelli ’088, FIG. 3 (annotated).)
`
`(Bitelli ’088, FIG. 4 (annotated).)
`
`
`
`
`
`
`
`
`
`
`- 11 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 18 of 80 PageID #: 40213
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`(Bitelli ’088, FIG. 5 (annotated).)
`
`
`
`For machines with a single support arm, artisans understood the wheel “has
`
`to be mounted rotationally on the lifting column” so that it can be rotated while the
`
`swing leg pivots to maintain the proper orientation of the wheel. (Simons, 1:59-60;
`
`Arnold Decl., ¶47.) A POSITA would have understood this to be the case with the
`
`Volpe Manual and would have understood that an operator manually rotates the
`
`wheel during pivoting of its single support arm. (Volpe Manual, 51; ’693 file
`
`history, 122-123, 168-169; ’693 Patent, 1:43-47; Arnold Decl., ¶47.)
`
`Artisans also were well-aware of designs for automatically rotating the
`
`wheel with one actuator while pivoting a single support arm with another actuator.
`
`For example, Ulrich, which is discussed in detail below, used this approach.
`
`(Ulrich, 1:47-49, FIG. 2; Gutman, 3:43-48, FIG. 3; Arnold Decl., ¶48.)
`
`Artisans also appreciated that the same actuator used for maintaining the
`
`wheel’s orientation through the pivot was useful for steering the wheel when
`
`
`
`
`
`
`- 12 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 19 of 80 PageID #: 40214
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`driving the machine. (Gutman, 3:43-48; Bitelli ’037, ¶0028.) Indeed, artisans were
`
`fully aware that rear steering was beneficial to improve the turning radius of the
`
`machine. (Arnold Decl., ¶49.) And the benefit of rear steering was particularly
`
`apparent when the machine used tracks instead of wheels. (Bitelli ’037, ¶0013.)
`
`Because the greater ground-contacting surface area of tracks causes undesired
`
`friction in a turn, artisans recognized the benefit of steering rear tracks to reduce
`
`friction and decrease track wear. (Bitelli ’037, ¶¶0012-0013.) Accordingly, the art
`
`recognized a desire to be able to steer re-entering wheels or tracks. (Arnold Decl.,
`
`¶49.)
`
`In short, well before the ’693 patent’s priority date, swing legs were well-
`
`known. And so too was the coordinated use of actuators to pivot the swing legs and
`
`orient the wheel to maintain a particular orientation with respect to the frame.
`
`(Arnold Decl., ¶50.)
`
`III. THE ’693 PATENT
`The ’693 patent issued on November 28, 2006, from U.S. Application No.
`
`10/476,206, the national stage of PCT Application No. PCT/EP02/04638 filed
`
`April 26, 2002. (’693 Patent, (22).) The background section of the ’693 patent
`
`described two prior art solutions for designing re-entering wheels. (Arnold Decl.,
`
`¶¶58-61.)
`
`
`
`
`
`
`- 13 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 20 of 80 PageID #: 40215
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`First, the ’693 patent’s background section described the same “Bitelli Volpe
`
`SF 100 T4M deep-cut cold planer for asphalt and concrete” that is discussed in
`
`Section II.B, above. (’693 Patent, 1:12-13.) The ’693 patent explained that the
`
`Volpe machine “allow[ed] for two operating positions of the one rear wheel,”
`
`including “a projecting position” and “a retracted position.” (’693 Patent, 1:12-23.)
`
`In addition, the ’693 patent stated that the Volpe machine included “a support
`
`arm…pivotally connected to the frame” at one end and “carr[ying] at its other end
`
`a wheel support comprising a lifting column.” (’693 Patent, 1:23-27.) However, the
`
`’693 patent states, the transition “[t]o move the rear wheel from its projecting
`
`position into its retracted position” was done manually with “the operator
`
`pivot[ing] the support arm, and also simultaneously rotat[ing] the lifting column so
`
`that the running direction of the rear wheel is maintained for the two operating
`
`positions.” (’693 Patent, 1:32-47.) The ’693 patent identified the same benefits of
`
`having a projecting position and a retracted position, and the same downsides of
`
`manually transitioning between these positions, as prior art Bitelli ’088. (Compare
`
`’693 Patent, 1:48-56 with Bitelli ’088, ¶¶0010-0011.)
`
`
`
`The ’693 patent’s inventors were certainly not the first to recognize the
`
`advantages of automating the pivoting of a swing leg, as the ’693 patent itself
`
`concedes. The ’693 patent’s background section described prior art document EP
`
`
`
`
`
`
`- 14 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 21 of 80 PageID #: 40216
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`0916004,1 which discloses a work machine that provided an automatic transition
`
`between a projecting position and a retracted position using a four-link mechanism.
`
`(’693 Patent, 1:57-2:1.) But without the slightest evidence, the ’693 patent asserts
`
`that EP 0916004’s prior art solution “may result in a reduced stability and stiffness
`
`of the work machine” because the machine’s load is “distributed to all four links of
`
`the four-link mechanism.” (’693 Patent, 2:1-4 (emphasis added).)
`
`
`
`In sum, the ’693 patent admits the Volpe’s manually-operated single-support
`
`arm apparatus was prior art. (’693 Patent, 1:12-19.) And the ’693 patent admits EP
`
`0916004’s automatically-pivoted four bar link apparatus was prior art. (’693
`
`Patent, 1:56-2:1.) In the ’693 patent, Caterpillar simply automated a single support
`
`arm articulation apparatus under the guise that such an apparatus would provide
`
`“greater stability in comparison with known machines.” (’693 Patent, 2:28.) But
`
`leaving aside Caterpillar’s complete lack of evidence for this assertion, Caterpillar
`
`does not, and cannot, allege that its invention offers any stability improvement
`
`over the Volpe. The Volpe had the same single-arm articulation apparatus that
`
`Caterpillar attempts to claim in the ’693 patent, Caterpillar simply adds two
`
`
`1 EP 0916004 is the European counterpart of Simons (Ex. 1011). Both are
`
`national stage entries of PCT/EP97/03142, which published as WO98/05822 on
`
`February 12, 1998.
`
`
`
`
`
`
`- 15 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 22 of 80 PageID #: 40217
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`actuators well-known in the art for that very purpose. (Ulrich, FIG. 2, Arnold
`
`Decl., ¶¶62-63.) One actuator pivots the arm, and a second actuator rotates the
`
`wheel. (Ulrich, FIG. 2.)
`
`In short, the ’693 patent does not claim anything that goes beyond what was
`
`well-known in the art. Claim 1 is exemplary and recites:
`
`1. A work machine comprising:
`a frame supported by a pair of front wheels or tracks and a pair
`of rear wheels or tracks, at least one of the wheels or tracks being
`associated with a respective lifting column adapted to raise and lower
`said frame relative to the respective wheel or track;
`a work tool supported by said frame;
`a drive mechanism adapted to rotate said work tool and at least
`one of said wheels or tracks;
`an articulation apparatus adapted to pivotally move said one of
`said wheels or tracks associated with said lifting column between a
`projecting position and a retracted position relative to said frame, said
`articulation apparatus including:
`a support arm pivotally connecting said frame to the lifting
`column associated with said one wheel or track;
`a first actuator connected to said support arm and operable to
`pivot said support arm relative to said frame;
`a second actuator adapted to rotate said at least one wheel or
`track about a vertical axis.
`
`
`
`
`
`
`- 16 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 23 of 80 PageID #: 40218
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) is a hypothetical person
`
`who is presumed to be aware of all pertinent art, thinks along conventional wisdom
`
`in the art, and is a person of ordinary creativity. A POSITA in the technical field of
`
`the ’693 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
`
`April 2001. (Arnold Decl., ¶25.)
`
`Here, a POSITA would typically have had: (i) a bachelor’s degree (or
`
`equivalent) in mechanical engineering (or a similar field) and at least two to five
`
`years of experience working on mobile construction machine design (or in a
`
`similar field); or (ii) seven to ten years of experience working on mobile
`
`construction machine design (or in a similar field). (Arnold Decl., ¶25.) A POSITA
`
`may have worked as part of a multidisciplinary team and drawn upon not only his
`
`or her own skills, but of others on the team, e.g., to solve a given problem. (Arnold
`
`Decl., ¶26.)
`
`V. CLAIM CONSTRUCTION
`In setting forth its unpatentability Grounds below, Wirtgen has applied the
`
`BRI of each claim term, including those terms not specifically discussed in this
`
`section.
`
`
`
`
`
`
`- 17 -
`
`

`

`Case 1:17-cv-00770-JDW Document 439-16 Filed 07/31/24 Page 24 of 80 PageID #: 40219
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,140,693
`
`In claim construction at the ITC, Wirtgen asserted that “an articulation
`
`apparatus adapted to pivotally move” is a means plus function limitation under 35
`
`U.S.C. § 112, ¶6. The associated structure is the support arm 11 that “is the only
`
`support for connecting the rear wheel support including the sleeve 132 to the frame
`
`2” and that “requires only one pivot point 12 at the frame” (’693 Patent, 5:48-50,
`
`6:58-67), as well as the first and second actuators. (’693 Patent ,