Trials@uspto.gov
`571-272-7822
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`Paper 38
`Entered: September 11, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CATERPILLAR INC.
`Petitioner,
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`v.
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`ERNIE BROOKINS,
`Patent Owner.
`____________
`
`Case IPR2017-01020
`Patent 7,824,290 B1
`____________
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`Before JILL D. HILL, BEVERLY M. BUNTING, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`HILL, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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`Paper 38
`Entered: September 11, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.
`Petitioner,
`
`v.
`
`ERNIE BROOKINS,
`Patent Owner.
`____________
`
`Case IPR2017-01020
`Patent 7,824,290 B1
`____________
`
`Before JILL D. HILL, BEVERLY M. BUNTING, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`HILL, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-01020
`Patent 7,824,290 B1
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`I. INTRODUCTION
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`
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`Caterpillar Inc. (“Petitioner”) filed a Petition requesting an inter
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`partes review of claims 1‒10 (“the challenged claims”) of U.S. Patent No.
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`7,824,290 B1 (Ex. 1001, “the ’290 patent”). Paper 1 (“Pet.”). Ernie
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`Brookins (“Patent Owner”) filed a Preliminary Response. Paper 29. We
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`instituted inter partes review of all grounds and all claims challenged in the
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`Petition. Paper 30, 7, 25 (Dec. on Inst.”). After institution, Patent Owner
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`filed a Patent Owner’s Response (Paper 32, “PO Resp.”), and Petitioner filed
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`a Reply (Paper 34, “Reply”). An oral hearing was held on June 5, 2018, and
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`a copy of the transcript was entered into the record. Paper 37 (“Tr.”).
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`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73 regarding the patentability of claims 1–10. For the
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`reasons set forth below, we conclude Petitioner has shown, by a
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`preponderance of the evidence, that claims 1–10 are unpatentable.
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`A. Related Matters
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`The parties indicate that the ’290 patent has been asserted in Ernie
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`Brookins v. Caterpillar Inc., 3:16-cv-00291 (D.N.D.). Pet. 3; Paper 28, 2.
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`Additionally, Patent Owner states that the ’290 patent has also been asserted
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`in: Brookins Hybrid Drive Systems, LLC v. M.A.C., Inc., 3:12-cv-00101
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`(D.N.D.); Warp Speed Torque Drive, LLC v. M.A.C., Inc., 3:13-cv-00045
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`(D.N.D.); and Brookins v. Parker-Hannifin Corp., 3:15-cv-00065 (D.N.D.).
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`Paper 28, 2–3.
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`B. The ’290 Patent (Ex. 1001)
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`The ’290 patent is directed to a rotational power distribution and
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`control system including a hydrostatic pump/motor, the system being
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`operable to function “similarly to a typical automotive manual clutch” or as
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`a “continuously or infinitely variable transmission[].” Ex. 1001, Abstract.
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`The ’290 patent is also directed to methods related thereto. Id.
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`Figure 1 is reproduced below.
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`Figure 1 is a cross-sectional schematic view of an embodiment of a
`rotational power distribution and control system configured as a hydraulic
`clutch. Id. at 8:59–61.
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`Figures 1–3 are described in the ’290 patent as illustrating “hydraulic
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`clutch system” embodiments of a rotational power distribution and control
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`system. Id. at 8:59–67. Figures 4A and 4B are described as illustrating a
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`“continuously variable transmission drive system[]” embodiment of the
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`rotational power distribution and control system. Id. at 9:1–4. Figures 5–7
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`and 8A–8G are described as illustrating a “pump/motor hybrid drive system”
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`embodiment of the rotational power distribution and control system. Id. at
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`9:5–17.
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`The embodiment of the rotational power and control device 100
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`illustrated in Figure 1 includes planetary gear set 107, hydrostatic (or other
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`hydraulic) pump 110, a first rotational interface in the form of first shaft 101,
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`a second rotational interface in the form of second shaft 102, and hydraulic
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`circuit 103. Id. at 10:42–48, 12:12–15. First shaft 101, second shaft 102,
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`and hydrostatic pump 110 each interface with a different one of the three
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`main components (i.e., sun gear 106, planet carrier 104, and ring gear 108)
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`of planetary gear set 107. Id. at 10:52–58.
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`In a planetary gear set, a direct mechanical interconnection can be
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`achieved between any two of the three main components by holding the
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`third main component stationary. Id. at 11:40–43. For example, if
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`hydrostatic pump 110 holds ring gear 108 stationary, rotation of planetary
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`carrier 104 by first shaft 101 will result in rotation of sun gear 106 and
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`second shaft 102. Id. at 11:43–45. However, if ring gear 108 is allowed to
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`rotate freely, rotation of planetary carrier 104 by first shaft 101 will not
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`result in rotation of sun gear 106 and second shaft 102. Id. at 11:54–61.
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`Hydrostatic pump 110 has housing 113 and cylinder block 112 with
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`axial bores 115 in which pistons 117 are slidably disposed. Id. at 12:27–40.
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`Housing 113 includes stationary angled swash plate 114 that slidably
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`interfaces with each of pistons 117 as the pistons rotate with their cylinder
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`block 112 relative to housing 113 and swash plate 114. Id. at 12:33–44. As
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`pistons 117 rotate relative to housing 113 and swash plate 114, the
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`inclination of swash plate 114 causes the rotating pistons to be compressed
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`in their bores as they rotate along certain portions of swash plate 114, which
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`causes fluid to flow from the cylinder block via first port 122 of hydrostatic
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`pump 110. Id. at 12:63–13:41.
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`Planetary gear set 107 has a “free-wheeling mode” where the input is
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`effectively disconnected from the output by letting the third component of
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`planetary gear set 107 (i.e., ring gear 108 in the embodiment of Figure 1)
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`free wheel. In a second, “locked mode,” the third component of planetary
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`gear set 107 is held stationary, allowing the other two components (i.e., sun
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`gear 106 and planetary carrier 104 in the embodiment of Figure 1) to be
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`interconnected and transfer rotational force therebetween. Id. at 13:42–49.
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`Additionally, in a “third mode,” by selectively applying a variable resistance
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`to the third component, the ratio of rotation of the other two components can
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`be continuously varied between the free-wheeling mode and the locked
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`mode. Id. at 13:49–53.
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`Such variable resistance is attained using a valve 124 that restricts
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`fluid flow from first port 122 of the hydrostatic pump 110. Id. at 13:54–57.
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`This flow restriction prevents fluid from leaving the bore of pistons 117 as
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`they are compressed via swash plate 114, and the resultant friction within
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`hydrostatic pump 110 thereby prevents relative rotation of cylinder block
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`112 and housing 113, such that rotation of ring gear 108 is prevented,
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`causing rotational force to be transmitted from first shaft 101 and planetary
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`carrier 104 to second shaft 102 and sun gear 106. Id. at 13:54–14:3, 14:7–
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`17. “[B]y regulating the flow through valve 124, the ratio of the rotational
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`rate of the first shaft 101 with respect to the rotational rate of the second
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`shaft 102 may be continuously varied.” Id. at 14:3–7.
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`C. Prosecution History of the ’290 Patent (Ex. 1003)
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`Patent Owner, Mr. Brookins, makes certain arguments based on a
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`restriction requirement and subsequent election that occurred during
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`prosecution of U.S. Patent Application No. 11/830,067 (“the Application”),
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`which issued as the ’290 patent. See PO Resp. 7–8. We provide a detailed
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`summary of the restriction and election here. On December 1, 2009, the
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`Examiner issued a restriction requirement (“the Restriction”), finding that
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`the Application contained claims directed to three patentably distinct
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`species: (1) a fluid valved controlled resistance brake for a planetary gearing
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`as shown in Figures 1–3; (2) a hydromechanical continuously variable
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`transmission (CVT) with planetary gearing as shown in Figures 4A, 4B, 6,
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`and 10; and (3) a hydrostatic pump/motor acting as a brake or a drive source
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`for a planetary gearing as shown in Figure 5. Ex. 1003, 84. The Examiner
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`indicated that the three species were “not obvious variants of each other,”
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`and that the claims “shall be restricted if no generic claim is finally held to
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`be allowable.” Id. The Examiner stated that “no claim appears to be
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`generic.” Id.
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`In response to the Restriction, Mr. Brookins filed an Election on
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`December 28, 2009 (“the Election” or “Elect.”), electing “Species I: Figures
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`1–3, Claims 1–14, 20, 26–30, 33,” withdrawing Species II with associated
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`claims 15–19, 31, 32, 34–40, and withdrawing Species III with associated
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`claims 21–25. Ex. 1003, 80. The Restriction was traversed “because
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`Species II & III perform the exact same function as Species I in that they all
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`use hydrostatic means to power a drive wheel and to start a vehicle,” and the
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`elements of “Figures 1–3 are also shown in Figures 4A–B, 5, 6, and 10. . . .”
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`Id. at 80. The Election further stated that “the species identified by the
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`examiner are not separate and distinct inventions.” Id.
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`Regarding Patent Owner’s traversal of the Restriction, the Examiner
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`responded that the traversal was not persuasive because –– regarding
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`functionality of the individual species –– “Species I is not used to power a
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`drive wheel or start a vehicle;” rather, “[t]he pump of Species I is used solely
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`for the purpose of retarding the rotation of a planetary gear element,” which
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`“is not the case with the pump and motor of” Species II and III. Id. at 34.
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`Patent Owner disagreed with the Examiner’s withdrawal of certain
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`additional claims (i.e., claims 27–30 and 33), arguing that these additionally-
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`withdrawn claims were drawn to a method of using the structure shown in
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`Figures 1–3. Id. at 23. In the Notice of Allowability, the Examiner stated
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`that “previously withdrawn claims 27–30 and 33” were reinstated “in
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`response to Applicant’s remarks. . . .” Id. at 15.
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`D. Illustrative Claim
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`Of challenged claims 1‒10, claims 1, 5, and 6 are independent. Claim
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`1, reproduced below, illustrates the challenged claims.
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`1.
`comprising:
`(a)
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`(b)
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`(c)
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`A rotational power distribution and control system
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`a gear set wherein said gear set comprises:
`(i)
`a first rotational interface;
`(ii)
`a second rotational interface; and
`(iii) a third rotational interface;
`a hydrostatic pump coupled to a selected rotational
`interface in the form of one of said first rotational
`interface, said second rotational interface and said
`third rotational interface; a cylinder block of said
`hydrostatic pump being coupled to one of said gear
`set;
`a hydraulic fluid circuit wherein said hydraulic fluid
`circuit is interconnected to a first port on said
`hydrostatic pump, wherein said hydraulic fluid
`circuit is interconnected to a second port on said
`hydrostatic pump; and
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`(d)
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`a valve to selectively control flow through said first
`port on said hydrostatic pump.
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`Ex. 1001, 32:34‒51.
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`E. Evidence Relied Upon
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`Petitioner relies on the following prior art references (Pet. 5–6):
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`Reference
`Keiser
`Rush
`Britt
`Whitaker
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`Patent/Publication Number
`US 2003/0032517 A1
`WO 2004/033906 A1
`US 6,634,976 B1
`US 2004/0187491 A1
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`Date
`Feb. 13, 2003
`Apr. 22, 2004
`Oct. 21, 2003
`Sep. 30, 2004
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`Exhibit No.
`1004
`1005
`1006
`1007
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`Petitioner relies on the declaration of Monika Ivantysynova, Ph.D (Ex.
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`1002). The parties rely on other exhibits as discussed below.
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`F. Instituted Grounds of Unpatentability
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`We instituted the instant trial based on the following grounds of
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`unpatentability. Dec. on Inst. 25.
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`Reference(s)
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`Keiser
`Keiser
`Keiser and Rush
`Keiser, Rush, and Britt
`Keiser, Rush, Whitaker
`Keiser, Rush, Britt
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`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
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`Claim(s) Challenged
`1, 2, 6, and 7
`1, 2, 6, and 7
`1–3 and 6–9
`10
`4
`5
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`8
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`II. ANALYSIS
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`A. Legal Principles
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`We analyze the instituted grounds of unpatentability in accordance with
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`the principles stated below.
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`1. Burden of Proving Unpatentability
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`In inter partes reviews, petitioner bears the burden of proving
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`unpatentability of the challenged claims, and the burden of persuasion never
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`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
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`Petitioner must support its challenges by a preponderance of the evidence.
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`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
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`and conclusions are based on a preponderance of the evidence.
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`2. Anticipation
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`A claim is anticipated if each limitation of the claim is disclosed in a
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`single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (holding that “it is not
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`enough [for anticipation] that the prior art reference discloses part of the
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`claimed invention, which an ordinary artisan might supplement to make the
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`whole, or that it includes multiple, distinct teachings that the artisan might
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`somehow combine to achieve the claimed invention.”) (citing In re Arkley,
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`455 F.2d 586, 587 (CCPA 1972)). To establish anticipation, Petitioner must
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`demonstrate that a prior art reference shows every element of the claimed
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`invention identically, in the same relationship as in the claim. In re Bond,
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`910 F.2d 831, 832 (Fed. Cir. 1990). All of the elements and limitations of
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`the claim must be shown in a single prior art reference, arranged as in the
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`claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
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`(Fed. Cir. 2001). “A claim is anticipated only if each and every element as
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`set forth in the claim is found, either expressly or inherently described, in a
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`single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d
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`628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of
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`anticipation is prior invention, the prior art reference—in order to anticipate
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`under 35 U.S.C. § 102—must not only disclose all elements of the claim
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`within the four corners of the document, but must also disclose those
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`elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369.
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`Whether a reference anticipates is assessed from the perspective of an
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`ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc.,
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`329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding
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`anticipation [i]s whether one skilled in the art would reasonably understand
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`or infer from the [prior art reference’s] teaching that every claim element
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`was disclosed in that single reference.”).
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`3. Obviousness
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`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter and the prior art are such that the subject matter, as a
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`whole, would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which the subject matter pertains.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
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`the art; and (4) where in evidence, so-called secondary considerations.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze
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`obviousness in accordance with the above-stated principles.
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`B. Claim Construction
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`The Board interprets claims using the broadest reasonable
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`interpretation in light of the specification of the patent in which they appear.
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`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., v. Lee, 136 S. Ct. 2131, 2142–
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`46 (2016). Under the broadest reasonable interpretation standard, and absent
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`any special definitions, we generally give claim terms their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the entire disclosure. In re Translogic Tech. Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
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`phrases must be set forth with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
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`absence of such a definition, limitations are not to be read from the
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`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
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`(Fed. Cir. 1993). We address below the parties’ contentions.
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`1.
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`“Cylinder Block”
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`Petitioner proposes an explicit construction for the term “cylinder
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`block of said hydrostatic pump” of “a rigid casing in which the cylinders of
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`a pump are bored.” Pet. 13. Patent Owner does not challenge Petitioner’s
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`proposed construction, nor does Patent Owner address whether express
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`construction of any term is necessary in its Patent Owner Response. See
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`generally PO Resp.
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`2. “Gear Set”
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`In our Decision on Institution, we preliminarily construed the term
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`“gear set” as “a set of gears.”1 Dec. on Inst. 9–10. Neither party disputes
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`this proposed construction. See generally PO Resp.; Reply. Now, with the
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`trial record fully developed, our determination regarding the patentability of
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`the challenged claims does not turn on the interpretation of “gear set.” As
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`such, we construe the term “gear set” as “a set of gears” for the reasons
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`provided in our Decision on Institution. Dec. on Inst. 9–10.
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`3. “Rotational Power Distribution and Control System”
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`Patent Owner repeats the same unsuccessful argument made in its
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`Patent Owner Preliminary Response concerning limiting the phrase
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`“rotational power distribution and control system” to a “fluid controlled
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`resistance brake” because of the restriction requirement during prosecution.
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`PO Resp. 3, 7–11. Patent Owner specifically argues that “[t]he patent
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`application was restricted by the examiner to that of a ‘fluid controlled
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`resistance brake’ (a hydraulic clutch) that takes the place of a standard clutch
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`or torque converter and does not change gear ratio.” PO Resp. 8. Petitioner
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`counters that Patent Owner does not cite to any authority that supports its
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`novel proposition that election of a species during prosecution necessarily
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`limits the scope of the claims, and that Patent Owner fails to “address the
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`Board’s prior determination in any manner.” Reply 4. We agree. In our
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`Decision on Institution, we preliminarily declined to limit the scope of
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`1 Patent Owner notes a claim construction ruling by a District Court in
`another proceeding involving the ’290 patent, construing “gear set” to mean
`“a gear set with three rotational interfaces.” Prelim. Resp. 14; Ex. 2001 at
`15.
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`claims 1–10 narrowly to include only the hydraulic clutch embodiment of
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`Figures 1–3, or a “fluid controlled resistance brake” as argued by the Patent
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`Owner. See PO Resp. 3, 7–8. Dec. on Inst. 11–12. Based on further review
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`of the record, including the prosecution history and details of the restriction
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`and election, we decline to limit the phrase “rotational power distribution
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`and control system” to a “fluid controlled resistance brake” for the reasons
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`provided in the Decision on Institution.
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` As to other terms or limitations recited in the claims, we determine
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`that express construction of these terms or limitations is not necessary. See
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`Vivid Techs., 200 F.3d at 803.
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`B. Level of Skill in the Art
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`In determining the level of skill in the art, various factors may be
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`considered, including the type of problems encountered in the art, the prior
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`art solutions to those problems, the rapidity with which innovations are
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`made, and the sophistication of the technology. Custom Accessories, Inc. v.
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`Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).
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`Petitioner, relying on the testimony of its declarant, contends that “[a]
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`person of ordinary skill in the art at the time of the invention (“POSITA”) of
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`the ’290 patent would have a degree in mechanical engineering or
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`equivalent, and 3–5 years’ experience in the research, development, or
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`application of hydraulic systems.” Pet. 12 (citing Ex. 1002 ¶¶ 14–17).
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`According to Petitioner, “[t]his level of skill is approximate and more
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`experience would compensate for less formal education, and vice versa.” Id.
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`(citing Ex. 1002 ¶¶ 14–17). Although Patent Owner disagreed with
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`Petitioner’s proposed definition in its Patent Owner Preliminary Response,2
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`Patent Owner does not dispute this contention directly in its Patent Owner
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`Response. See, generally, PO Resp.
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`Based on the entire record, we agree with Petitioner’s assessment, and
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`find that a POSITA “would have [had] a degree in mechanical engineering
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`or equivalent, and 3–5 years’ experience in the research, development, or
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`application of hydraulic systems, and that significant experience with, or an
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`understanding of hydraulic systems, would compensate for a formal degree.”
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`Pet. 12. We also note that the cited references reflect the appropriate level
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`of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself can reflect the
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`appropriate level of skill in the art”).
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`C. Anticipation by Keiser – Claims 1, 2, 6, and 7
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`Petitioner challenges claims 1, 2, 6, and 7 as anticipated under
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`35 U.S.C. § 102(b) by Keiser. Pet. 15–31. In support thereof, Petitioner
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`identifies the disclosure in Keiser alleged to describe the subject matter in
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`each of the challenged claims. Id. Petitioner further cites the Declaration of
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`Monika Ivantysynova (Ex. 1002) in support of the analysis advocated in the
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`Petition. Id. Patent Owner counters that Keiser does not disclose “a ‘fluid
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`controlled resistance brake’ that is a clutch that does not effect a gear ratio
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`2 Specifically, Patent Owner argued that he “took his apprenticeship in
`clutch and transmissions in Sacramento, California at 18 years of age,” and
`that “[a] person of ordinary skill in the art at the time of the invention of the
`’290 patent would need extensive knowledge in the automotive clutch and
`transmission fields.” Prelim Resp. 8.
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`change,” or “coupling” that would result in no gear ratio change. PO Resp.
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`3–4.
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`We have reviewed the parties’ contentions and supporting evidence.
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`Given the evidence of record, we determine that Petitioner has demonstrated
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`by a preponderance of the evidence that challenged claims 1, 2, 6, and 7 are
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`anticipated by Keiser. We begin our analysis with a brief summary of
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`Keiser, and then address the parties’ contentions in turn.
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`1. Overview of Keiser (Ex. 1004)
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`US Patent Publication No. 2003/0032517 A1 to Keiser was filed June
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`21, 2002, and published February 13, 2003. Ex. 1004, (10), (22), (43).
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`Keiser is a continuation-in-part of US Patent No. 6,135,909, filed October
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`25, 1999, and is a continuation-in-part of US Patent No. 5,971,880, filed
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`August 7, 1998. Id. at (63). Keiser is directed to “an infinitely variable ratio
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`transmission.” Id. at ¶ 3. As shown in Figure 1 reproduced below, the
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`infinitely variable ratio transmission includes an input shaft 12 attached to a
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`carrier plate 20 of planetary gears 18 of a planetary gear set, an output shaft
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`24 attached to a ring gear 22 of the planetary gear set, and a pump 14
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`attached to a sun gear 16 of the planetary gear set. Id. Abst.
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`15
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`Patent 7,824,290 B1
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`Figure 1 is a partial cross-sectional side view of
`Keiser’s infinitively variable ratio transmission pump.
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`Keiser describes variator pump 14 as “any type of positive
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`displacement pump known to those skilled in the art, such as, for example, a
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`rotary vane pump, a piston pump, [etc.].” Id. ¶ 28. The pump can, for
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`example, be a five piston variator pump, wherein the pistons act on an
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`eccentric lobe mounted on the crankshaft to control rotational speed of the
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`crankshaft. Id. ¶¶ 15, 37–32, Fig. 9.
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`2. Discussion
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`We previously instructed Patent Owner that “any arguments for
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`patentability not raised in the [Patent Owner Response] will be deemed
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`waived.” Paper 31, 7; see also 37 C.F.R. § 42.23(a) (“Any material fact not
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`specifically denied may be considered admitted.”); In re NuVasive, Inc., 842
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`F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding that patent owner waived an
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`argument addressed in the preliminary response by not raising the same
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`argument in the patent owner response). Additionally, the Board’s Patent
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`Trial Practice Guide states that the Patent Owner Response “should identify
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`all the involved claims that are believed to be patentable and state the basis
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`for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,766 (Aug. 14, 2012).
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`With the complete trial record before us, we note that we have
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`reviewed arguments and evidence advanced by Petitioner to support its
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`unpatentability contentions, and that Patent Owner chose not to address
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`certain arguments and evidence in its Patent Owner Response. In this
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`regard, the record now contains persuasive arguments and evidence
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`presented by Petitioner, many of which are unrebutted, regarding the manner
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`in which the asserted prior art teaches corresponding limitations of claims 1,
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`2, 6, and 7, against which the prior art is asserted. Based on a preponderance
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`of the evidence before us, we conclude that the prior art identified by
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`Petitioner discloses all uncontested limitations of claims 1, 2, 6, and 7.
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`Below, we discuss a few of the uncontested limitations followed by a
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`detailed analysis of the contested limitations.
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`a. Independent Claim 1
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`The preamble of claim 1 recites a “rotational power distribution and
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`control system.” Ex. 1001, 32:34–51. Petitioner argues that this limitation
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`is satisfied by the disclosure in Keiser of an infinitely variable ratio
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`transmission (“IVRT”) 10 and a control valve 48. Pet. 15 (citing Ex. 1004,
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`5–2, 27:1–5, 29; Ex. 1002, 35). Petitioner’s expert, Monika Ivantysynova,
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`testifies that “Keiser discloses an infinitely variable ratio transmission
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`(IVRT 10) for transmitting power from a rotational power source (e.g., an
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`17
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`automobile engine) to a driven member (e.g., axle connected to the drive
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`wheels of the automobile). Ex. 1002 ¶ 35 (citing Ex. 1004, Abst, 5:1–4).
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` As discussed in Section II(B)(3) above, we declined to limit the
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`“rotational power distribution and control system” to a particular type of
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`“gear system and components using a hydrostatic pump to control rotational
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`output.” See Ex. 1001, 1:18–21(“The present invention relates to rotational
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`power distribution and control systems, and more particularly to gear
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`systems and components using a hydrostatic pump to control rotational
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`output.”). In his Response, Patent Owner argues that Keiser does not
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`disclose a “fluid controlled resistance brake” that is a clutch and does not
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`effect a gear ratio change –– which is the species selected by the Patent
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`Owner due to the Restriction required by the patent examiner during
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`prosecution of the ’290 patent. PO Resp. 3. Petitioner counters that we
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`correctly determined in our Decision on Institution that “‘[t]he election of an
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`invention in response to an ambiguous restriction requirement . . . cannot be
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`said to provide any guidance forming a basis for narrowing a broadly drafted
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`claim.’” Reply 4 (citing Dec. on Inst. 11–12).
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`Patent Owner’s previous election of a particular species for
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`examination does not persuade us that the claim term “rotational power
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`distribution and control system” is limited to a “fluid controlled resistance
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`brake.” Indeed, the prosecution history indicates that Patent Owner elected
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`the fluid valve controlled resistance brake species (Species I), and
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`additionally traversed the restriction.3 Ex. 1003, 80. Although Patent
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`3 We note that Patent Owner argued during prosecution that “the species
`identified by the examiner are not separate and distinct inventions” because
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`18
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`Owner withdrew certain claims directed to other potential species during
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`prosecution, this does not mean that claim 1 is limited to a resistance brake
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`as Patent Owner now argues. Moreover, the claims were not amended to
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`specifically limit the term “rotational power distribution and control system”
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`to a resistance brake. Id. at 15.
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`Patent Owner, however, does not dispute Petitioner’s contention that
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`Keiser’s infinitely variable ratio transmission (“IVRT”) 10 and control valve
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`48 is a “rotational power distribution and control system.” Based on the
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`entire record, we find that Petitioner presented persuasive arguments and
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`evidence to support a finding that Keiser’s infinitely variable ratio
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`transmission (“IVRT”) 10 and control valve 48 satisfies the “rotational
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`power distribution and control system” limitation of claim 1.
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`Claim 1 also recites “(a) a gear set.” Ex. 1001, 32:37. Petitioner
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`provides a comparative annotated Figure 1 of the ’290 patent and Figure 1 of
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`Keiser, reproduced below, to illustrate the correspondence between the gear
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`set of the ’290 patent and Keiser. Patent Owner does not dispute Petitioner’s
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`contention.
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`they perform the same function of “us[ing] hydrostatic means to power a
`drive wheel and to start a vehicle.” Ex. 1003, 80.
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`19
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`Figure 1 of the ’290 patent and Figure 1
`of Keiser, as annotated by Petitioner.
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`We find that Keiser, as contended by Petitioner, discloses a gear set as
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`required by claim 1.
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`Claim 1 also recites, in relevant part, that the gear set includes “a first
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`rotational interface,” “a second rotational interface,” and “a third rotational
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`interface.” Ex. 1001, 32:38–40. Petitioner argues that the first rotational
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`interface is met by Keiser’s disclosure regarding input shaft 12, planetary
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`gears 18, and planetary carrier plate 20, which are color coded yellow in
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`20
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`Keiser’s Figure 1, above. Pet. 16 (citing Ex. 1004, 27:9–14, Fig. 1; Ex.
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`1002, 36–37, Section VIII.1.iii). Referring to ring gear 22, fixedly attached
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`to output shaft 24, and color coded green in Keiser’s Figure 1 above,
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`Petitioner argues that Keiser discloses the second rotational interface. Id. at
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`17 (citing Ex. 1004, 5:4–5, 27:22–23, Fig. 1; Ex. 1002, Section VIII.1.iv).
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`Referring to sun gear 16 (color coded brown) coupled to pump 14 (color
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`coded orange) by connecting shaft 46 in Keiser’s Figure 1 above, Petitioner
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`argues that Keiser discloses the claimed third rotational interface. Pet. 17–
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`18 (citing Ex. 1004 at 27:24–27, 28:1–5, 23–26, Fig. 1 and 2; Ex. 1002, ¶¶
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`36–37, Section VIII.1.v). Patent Owner does not dispute Petitioner’s
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`contention in his Response. We find that Keiser, as contended by Petitioner,
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`discloses the first rotational interface, second rotational interface and third
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`rotational interface as required by claim 1.
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`Claim 1 then recites “(b) a hydrostatic pump coupled to a selected
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`rotational interface in the form of one of said first rotational interface, said
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`second rotational interface and said third rotational interface.” Ex. 1001,
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`32:41–44.
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`21
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`Petitioner further annotates Figure 1 of Keiser, reproduced below, to show
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`the correspondence between this claim element and Keiser.
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`Figure 1 of Keiser as annotated by Petitioner.
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`Specifically, Petitioner argues that sun gear 16 (color coded brown),
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`coupled to variator pump 14 (color coded orange) by connecting shaft 46,
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`satisfies this limitation because Keiser’s variator pump 14 is a hydrostatic
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`pump and is coupled to Keiser’s third rotational interface. Pet. 18–19 (citing
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`Ex. 1004, 28:1–5, 23–26; Ex. 1002 ¶ 38, Section VIII.1.vi.). Petitioner
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`further explains that variator pump 14 is a
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