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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Caterpillar, Inc.
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`Petitioner
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`v.
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`Wirtgen America, Inc.
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`Patent Owner
`
`
`Patent No. 9,656,530
`Case No. IPR2017-02188
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`PETITIONER REPLY
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
`I.
`II. REPLY ARGUMENTS ................................................................................. 2
`A.
`The Combination of Swisher and Glasson Renders Claim 1
`Obvious ................................................................................................. 2
`1. Wirtgen Improperly Narrows Claim 1 by Relying on
`Unclaimed Features to Argue Nonobviousness .......................... 2
`The Proposed Differences Between External and Internal
`Reference Sensors that Wirtgen Alleges Are Undermined
`by the Broad Sensor Language in Claim 1 and
`Admissions by its Expert ............................................................ 7
`Rather Than Addressing Caterpillar’s Reasons to
`Combine Swisher and Glasson, Wirtgen Rebuts a
`Strawman Argument that Reads Limitations into the
`Claims ......................................................................................... 9
`4. Wirtgen’s Expert Applies a Level-of-Skill Definition that
`Contradicts His Previous Definition from the ITC Case
`and Improperly Focuses on Unclaimed Features ...................... 15
`5. Wirtgen Challenges Mr. Labus’s Level-of-Skill
`Definition Despite Admissions from its Expert Stating
`that the Differences in the Parties’ Definitions Are
`“Inconsequential” to Validity ................................................... 17
`Because Wirtgen Provides No Independent Argument on
`Claims 2-7, 13-15, 19-24, and 26, These Claims Should Be
`Invalidated if Claim 1 is Invalidated ................................................... 18
`The Synchronous Leg Movement Limitations in Claims 16 and
`17 Do Not Make Those Claims Nonobvious ...................................... 19
`The “Equal Amounts” Limitation in Claim 18 Does Not Make
`the Claim Nonobvious ......................................................................... 20
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`D.
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`2.
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`3.
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`B.
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`C.
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`i
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`E.
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`The State of the Art Confirms that a POSITA Would Have
`Known to Add Leg Sensors to a Road Milling Machine .................... 22
`F. Wirtgen’s Secondary Considerations Arguments Lack Merit ............ 25
`III. CONCLUSION ............................................................................................ 27
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`ii
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`I.
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`INTRODUCTION
`Caterpillar challenged claims 1-7, 13-24, and 26 in its Petition. But Wirtgen
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`only addressed claims 1 and 16-18 in its Patent Owner Response (POR), devoting
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`most of its analysis to claim 1. Wirtgen’s analysis fails because it focuses on
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`unclaimed features involving external reference sensors and precision-milling
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`profiles. Claim 1 has no such features—it is simply an obvious combination of
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`Swisher and Glasson, where prior-art sensors are added to the legs of a prior-art
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`road construction machine to measure the extension and retraction of piston
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`cylinders inside the legs. Dependent claims 16-18 are likewise elementary and
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`provide no basis for patentability—they involve merely moving legs
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`synchronously and by equal amounts.
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`Wirtgen also argues it was the “first to recognize the advantages of
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`monitoring the lifting positions of a road construction machine’s lifting columns to
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`permit an operator to select a desired frame orientation for a particular working
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`operation.” POR, 2. It was not—
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`1
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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` Such flawed arguments cannot overcome Caterpillar’s
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`obviousness combination.
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`II. REPLY ARGUMENTS
`A. The Combination of Swisher and Glasson Renders Claim 1
`Obvious
`1. Wirtgen Improperly Narrows Claim 1 by Relying on
`Unclaimed Features to Argue Nonobviousness
`Milling machines before the ’530 patent had machine frames with drums
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`attached that were used to mill the road surface. Ex. 1105, Abstract. The milling
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`drum’s position was controlled by moving the legs, or lifting columns, in response
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`to a hydraulic piston cylinder that extends and retracts inside the legs. Id., 8:40-45.
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`Elements 1.0-1.7 in claim 1 cover this standard milling machine design. Ex. 1169,
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`49:24-53:2. Wirtgen’s expert admits that Swisher discloses elements 1.0-1.7. Id.,
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`68:5-72:16, 135:14-20.
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`The only other elements in claim 1—i.e., elements 1.8 and 1.9—are the leg
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`sensor limitations. Thus, claim 1 simply takes a prior-art road construction
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`machine and adds sensors to the legs that measure how much the piston cylinder
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`extends and retracts. Accordingly, the relevant question for claim 1 is whether it
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`would have been obvious for a POSITA to modify a prior-art road construction
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`machine by using sensors to track movement of hydraulic cylinders in the legs. As
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`described in Caterpillar’s Petition and below, this design modification is made
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`2
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`obvious by Glasson, which discloses the use of sensors to measure the extension
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`and retraction of hydraulic cylinders in construction machines.
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`To overcome the simplicity of Caterpillar’s proposed modification, Wirtgen
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`improperly adds unclaimed features to claim 1, and then argues against that
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`narrower strawman claim. For example, Wirtgen relies on the following unclaimed
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`functionalities in trying to distinguish claim 1 over the prior art:
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`• Resolving fluid leakage issues occurring in the road construction
`machine’s hydraulic cylinders. POR, 18-19.
`• Accounting for tire pressure deviations. Id., 15.
`• Accounting for load distribution changes that result from using fuel and
`water during milling. Id.
`• Orienting the road construction machine’s frame parallel to the ground
`while milling. Id., 16.
`• Returning the road construction machine to a pre-set position. Id., 17-18.
`Wirtgen also argues that Caterpillar’s prior art arguments should be rejected
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`because they would not result in a “precision” milling machine. Id., 41-47. In
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`particular, Wirtgen criticizes Caterpillar’s Swisher/Glasson combination on the
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`grounds that adding leg sensors to Swisher, and then relying on information only
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`from those sensors, would result in a nonprecision-milling profile. Id. Dr. Lumkes
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`provided a graphic (shown below) suggesting that a nonprecision-milling profile
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`would result where a machine only relies on information from leg sensors and not
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`3
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`on information from an external reference control system. Ex. 2060, ¶57; Ex. 1169,
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`86:20-87:13.
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`Claim 1 contains none of the functionalities bulleted above and does not
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`require a precision-milling machine with an elevation control system. Instead, the
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`road construction machine in claim 1 is a rudimentary machine that only has leg
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`sensors and does not know where the ground is, which means the “precision-
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`milling” limitation Wirtgen seeks to add is not in this claim. Ex. 1169, 74:5-15,
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`79:19-80:8, 89:20-25. Even Wirtgen’s expert admits this:
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`So if I had a machine as described in Claim 1 with
`Q.
`only lifting position sensors in the legs, would I get any
`of those three milling profiles there [as shown in ¶ 57 of
`Ex. 1169]?
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`A. Okay. So just in a general sense with this—now
`assumptions, you’re just saying—there’s no other sensors
`on the machine?
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`4
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`Q. Correct.
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`A. You’ve got the four leg position sensors. So the
`middle operation would be typical of what you would
`get.
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`Q. Okay. Is that an acceptable milling profile?
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`It’s—not drawn to scale. Not drawn to scale and
`A.
`I’m not sure what the goal of it is, but likely not.
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`Ex. 1169, 86:20-87:19. Thus, Wirtgen narrows the claims by holding the prior art
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`to a higher standard (i.e., a machine that produces a precision-milling profile by
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`using external reference sensors) than claim 1 requires (i.e., a machine that merely
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`requires leg sensors, regardless of milling profile). This violates Federal Circuit
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`precedent. See, e.g., In re ICON Health & Fitness, 496 F.3d 1374, 1381 (Fed. Cir.
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`2007) (declining to distinguish reference on grounds that it disclosed a dual-action
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`spring and the invention disclosed a single-action spring because the claims were
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`“broad” and had no limitation requiring a single-action spring).
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`Wirtgen could have claimed a machine in claim 1 that produced a precision-
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`milling profile by adding a limitation requiring sensors that measure distance to an
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`external reference point, such as the ground. Ex. 1169, 79:19-80:7; Ex. 2060, ¶53-
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`58. Indeed, the ’530 patent discloses an external reference sensor that, if added to
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`claim 1, would have allowed for a precision-milling profile by providing
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`5
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`information on the distance to the ground—i.e., sensor 30 in Figure 3. Ex. 1001,
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`Fig. 3, 7:22-43; Ex. 1169, 59:5-61:11. Figure 3 also depicts another sensor through
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`components 18, 21, and 22 that is the type of sensor covered by claim 1. Ex. 1169,
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`56:7-19, 58:15-59:4, 64:9-65:23.
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`Thus, Figure 3 describes two different sensors—“one internal reference
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`sensor, which is the wire-rope, and then . . . an external reference sensor, which is
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`the distance sensor 30.” Id., 61:7-11. Wirtgen’s expert admits that the distance
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`sensor 30 is not covered by claim 1. Id., 65:10-67:7 (explaining the sensor 30 “does
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`not include information” on lifting position and “that Claim 1 is not referring to an
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`external reference sensor”). Claims 30 and 31 in the ’530 patent, however, do
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`cover the sensor 30 design.1 In fact, as Wirtgen’s expert admits, claims 30 and 31
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`cover both types of sensors in Figure 3. Id., 101:12-104:3. Thus, Wirtgen knew
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`how to claim a precision-milling machine; it simply chose not to in claim 1, opting
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`for a broader claim that can cover machines that provide nonprecision-milling
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`profiles. While Wirtgen has used this broad claim to accuse Caterpillar of
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`infringement, the claim differentiation doctrine and rule against importing
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`limitations prevent it from narrowing the claim now on the validity side. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
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`1 Claims 30 and 31 are not at issue in these IPR proceedings.
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`6
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`2.
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`The Proposed Differences Between External and Internal
`Reference Sensors that Wirtgen Alleges Are Undermined by
`the Broad Sensor Language in Claim 1 and Admissions by
`its Expert
`Wirtgen’s nonobviousness arguments for claim 1 rely mostly on the fact that
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`Swisher discloses external reference sensors on the side plates that measure
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`distance to an external point (e.g., a point associated with the ground), while claim
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`1 recites internal reference sensors that measure distance between two points on
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`the machine (e.g., points at opposite ends of a piston cylinder). POR, 34-47.
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`Wirtgen’s proposed distinctions between these two types of sensors, however, are
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`overblown, especially in view of the general sensor disclosures in claim 1 and the
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`’530 patent. Neither claim 1 nor the ’530 patent describe a new type of sensor.
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`Claim 1 broadly requires “lifting position sensors” on the legs, which the ’530
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`patent explains can be implemented through “known path measuring systems.” Ex.
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`1001, 3:3-14. Thus, the sensors that claim 1 adds to the road construction
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`machine’s legs are prior-art sensors, which Wirtgen’s expert recognizes. Ex. 1169,
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`93:8-94:22.
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`The sensors at issue in these proceedings are primarily distance sensors,
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`which can be further characterized as internal or external depending on what is
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`measured. For example, the distance sensors in claim 1 and Glasson are internal
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`reference sensors because they measure the extension and retraction of a piston
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`7
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`cylinder (i.e., two points on the machine). Id., 56:11-19, 63:12-65:23, 142:8-
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`144:22. Swisher also discloses distance sensors (on its side plates), although they
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`are external reference sensors because they measure to a point relative to the
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`ground. Id., 22, 15-20, 131:2-134:1.
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`Wirtgen’s reliance on distinctions between internal and external reference
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`sensors is undermined by the fact that the same distance sensor can be external or
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`internal depending on what it measures. If a linear distance sensor measures the
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`distance between two points on the same machine, it is an internal reference
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`sensor. But if that same sensor is used to measure the distance between a point on
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`the machine and an external reference point such as the ground, it becomes an
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`external reference sensor. Wirtgen’s expert admits this. Id., 48:7-49:20 (agreeing
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`that the “same physical sensor can be either an internal reference sensor or an
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`external reference sensor, depending on how I use it”); id., 44:18-45:18, 46:22-
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`47:11.
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`In sum, Swisher shows it was known to use sensors on road construction
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`machines to measure various distances associated with the machine. Glasson
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`shows it was known to use internal reference distance sensors to measure the
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`extension and retraction of hydraulic cylinders in construction machines. This prior
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`art evidence, coupled with the admissions by Wirtgen’s expert showing that a
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`sensor’s characterization as an internal or external reference sensor is a matter of
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`8
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`application rather than structure, proves that Claim 1’s application of generic
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`distance sensors to hydraulic cylinders in legs of a road construction machine is
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`obvious. Ex. 1150, ¶62-111; Ex. 2020, 107:22-109:16.
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`3.
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`Rather Than Addressing Caterpillar’s Reasons to Combine
`Swisher and Glasson, Wirtgen Rebuts a Strawman
`Argument that Reads Limitations into the Claims
`Wirtgen contends Caterpillar never argued in its Petition that a POSITA
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`would “modify Swisher’s planing apparatus by adding four new sensors” from
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`Glasson. POR, 48. It is difficult to fathom how Wirtgen can make this argument—
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`modifying Swisher by adding the Glasson sensors to measure the extension and
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`retraction of the piston cylinders inside Swisher’s legs was the basis of
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`Caterpillar’s obviousness argument for claim 1. Caterpillar proposed this
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`modification multiple times throughout its Petition and accompanying declaration.
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`See, e.g., Petition, 22-26 (“Implementing Glasson’s in-cylinder sensor on
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`Swisher’s hydraulic actuators would have predictably provided signals indicating
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`the amount of extension in Swisher’s actuators”); Ex. 1150, ¶¶64, 68; Ex. 2020,
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`94:17-96:10. Caterpillar’s proposed design modification is simple, especially
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`because Swisher’s telescoping legs already have a piston cylinder inside. Ex. 1105,
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`8:40-61.
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`Moreover, Caterpillar provided multiple reasons why a POSITA would have
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`combined Swisher and Glasson by adding the Glasson sensors to the piston
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`cylinders in Swisher’s leg columns:
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`• Swisher and Glasson are analogous art, belong to the same field of
`endeavor, and disclose the use of sensors and hydraulic cylinders in
`heavy construction equipment. Petition, 22-23; Ex. 1150, ¶¶45-54.
`• A POSITA would have had a reasonable expectation of success in
`making the simple design modification of using the Glasson sensor,
`which was already designed to track the extension and retraction of a
`piston cylinder, on the piston cylinders in the legs of the Swisher machine
`to track extension and retraction. This simple design modification
`involved known elements and would have provided predictable results.
`Petition, 25-26; Ex. 1150, ¶¶67-69.
`• Using the Glasson sensors on the Swisher machine in the manner
`Caterpillar proposes would have protected the sensors from
`environmental conditions. Petition, 23-25; Ex. 1150, ¶¶63-66, 69
`• Using the Glasson sensors in the legs of the Swisher machine would have
`provided additional information on lifting column position, beyond what
`the sensors in Swisher provided. Petition, 42; Ex. 1150, ¶105.
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`Wirtgen does not contend that a POSITA would be unable to use the
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`Glasson sensor design on the hydraulic cylinders in the Swisher lifting columns, or
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`that this particular design modification would make Swisher inoperable for its
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`intended purpose. Thus, Wirtgen has no substantive response to the core of
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`Caterpillar’s obviousness argument. Instead, Wirtgen focuses more narrowly on
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`only one of Caterpillar’s reason-to-combine arguments, contending that a POSITA
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`would not remove Swisher’s sensors from the side plates and add sensors to the leg
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`columns because this would make Swisher inoperable for its intended purpose by
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`preventing it from being a precision-milling machine. POR, 41-52.
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`As an initial matter, Caterpillar does not contend that a POSITA would have
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`moved Swisher’s actual side-plate sensors into its lifting columns. As mentioned,
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`Caterpillar contends that a POSITA would have added the Glasson sensors to the
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`Swisher lifting columns. Petition, 22-26. Further, one particular design option a
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`POSITA reading Glasson would have considered is a protected sensor design for a
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`road construction machine, where Swisher’s external sensors are removed from the
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`environment altogether in favor of shielded sensors, such as the Glasson in-piston
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`cylinder sensors. Petition, 24-25; Ex. 1150, ¶64. This is because Glasson discloses
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`numerous benefits associated with protecting sensors from environmental
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`conditions and using protected sensors to measure the extent to which a piston
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`cylinder extends and retracts. See, e.g., Petition, 22-26; Ex. 1150, ¶¶62-68; Ex.
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`2020, 42:14-22, 94:17-96:10.
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`Moreover, Caterpillar’s expert explained that adding Glasson’s sensors to
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`Swisher’s legs, regardless of what other sensors are on the machine, would not
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`only allow a POSITA to obtain information on Swisher’s leg position by
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`measuring the extension and retraction of the cylinder inside, but it would do so
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`11
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`reliably because the sensor is shielded from the environment. Ex. 1150, ¶63-64,
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`67-68; Ex. 2020, 42:14-22. And Wirtgen’s expert admitted that a milling machine
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`with leg sensors would allow for the added feature of manual milling operation,
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`meaning that a milling machine operator would be able to view information on leg
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`position and mill manually based on that. Ex. 1169, 86:6-13 (explaining that a
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`milling machine with only leg sensors would allow “[y]ou to begin milling with
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`manual setup if you wanted to”). Thus, adding the Glasson sensors to Swisher
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`produces tangible benefits that exist even when the Swisher side-plate sensors have
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`been removed from the environment.
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`Wirtgen overlooks these benefits and focuses instead on an alleged
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`disadvantage associated with unclaimed features involving external reference
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`sensors and nonprecision-milling profiles. POR, 41-52. As mentioned, the machine
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`recited in claim 1 also only has leg sensors—claim 1 does not require external
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`reference sensors or precision milling. Thus, the benefits Caterpillar asserts—e.g.,
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`reliably obtaining information on leg position from a protected sensor and allowing
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`for manual milling operations—are commensurate with the claim scope, which
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`makes these benefits relevant in the obviousness analysis. In contrast, the
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`disadvantage that Wirtgen alleges—a milling machine that provides an imperfect
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`milling profile because it lacks external reference sensors—relates to unclaimed
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`features.
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`12
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`That benefits provided by a secondary reference may compromise benefits
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`from a base reference involving an unclaimed feature does not prevent an
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`obviousness finding. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016). In
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`Urbanski, the patent applicant argued that the claims were not obvious because the
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`prior art combination would eliminate a benefit taught by the base reference. Id. at
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`1241. The Federal Circuit rejected this argument, explaining that a POSITA
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`“would have been motivated to pursue the desirable properties taught by” the
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`secondary reference, “even if that meant foregoing the benefit taught by” the
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`primary reference. Id. at 1244. In reaching this conclusion, the court relied on the
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`fact that the applicant’s “claims do not require” the “benefit” from the primary
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`reference “that is arguably lost by combination with” the secondary reference. Id.
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`Next, in focusing so heavily on only one of Caterpillar’s motivations to
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`combine—i.e., removing Swisher’s sensors from the environment in favor of
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`protected sensors (such as Glasson’s sensors)—Wirtgen overlooks a separate
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`motivation-to-combine argument that Caterpillar made—i.e., that a POSITA would
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`have been motivated to add the Glasson sensors to the legs while keeping the
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`Swisher side-plate sensors in place. While the side-plate sensors would have
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`remained exposed to the environment under this design, the design would have
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`allowed a POSITA to obtain “additional information” from protected sensors that
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`went beyond the information that Swisher already provided and allowed for a more
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`13
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`precise milling profile. Ex. 1150, ¶105. This “additional information” would have
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`also allowed for the inclusion of the manual milling mode feature described above.
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`Ex. 1169, 86:6-13.
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`Wirtgen contends that Caterpillar never proposed a combination in its
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`Petition where the Glasson sensors were added to the legs and the Swisher side-
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`plate sensors were left in place. POR, 48-55. But Wirtgen is incorrect. As
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`mentioned, Caterpillar asserted multiple times in its Petition that a POSITA would
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`add the Glasson sensors to the piston cylinders in the legs of the Swisher machine.
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`Petition, 22-26. And in his declaration, Caterpillar’s expert explained that this
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`modification would have provided “additional information” beyond what Swisher
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`already had. Ex. 1150, ¶105.
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`To the extent Wirtgen believed Caterpillar’s argument was unclear, it asked
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`numerous questions on this issue at the deposition of Caterpillar’s expert, who
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`confirmed that it would have been obvious to arrive at claim 1 by adding the
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`Glasson sensors to Swisher’s legs and leaving the side-plate sensors in place.
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`Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360,
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`1366 (Fed. Cir. 2016) (allowing evidence and argument where opposing party was
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`“given notice” and had “an opportunity to respond”). Caterpillar’s expert explained
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`that a design where Swisher’s external side plate sensors remain on the machine
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`would be desirable if a POSITA’s goal was to preserve a precision-milling profile,
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`even though this type of profile is not required by the design recited in claim 1. Ex.
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`2020 at 168:4–17, 172:8-14, 171:13–20.
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`4. Wirtgen’s Expert Applies a Level-of-Skill Definition that
`Contradicts His Previous Definition from the ITC Case and
`Improperly Focuses on Unclaimed Features
`Wirtgen’s expert provided a level-of-skill-in-the-art definition for the ’530
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`patent four separate times in the ITC case between January and March of 2018,
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`applying the same definition each time:
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`A person of ordinary skill in the art [POSA] would have 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 a similar field or, alternatively, would have
`seven to ten years of experience working on mobile
`construction machine design, or in a similar field.
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`Ex. 1169, 113:7-119:21.
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`Wirtgen’s expert materially changed his level-of-skill-in-the-art definition,
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`however, a few months later in this IPR, stating that a POSITA would have:
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`a bachelor’s degree in mechanical or electrical engineering
`or an equivalent degree and two to five years of experience
`in the design of road construction machines that are
`concerned with orientation of their frame with respect to
`ground. Alternatively, a POSA may have seven to ten
`years of experience in the design of road construction
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`15
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`machines that are concerned with the orientation of their
`frame with respect to ground.
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`Id., ¶87 (emphasis added). Put differently, Wirtgen’s expert overhauled his level-
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`of-skill-in-the-art definition in this IPR to focus on the “orientation” of the road
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`construction machine’s frame “with respect to ground.” This modification defies
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`logic under claim 1. As Wirtgen’s expert admits, the machine defined in claim 1
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`only has internal reference sensors and cannot determine where the ground is. Id.,
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`79:19-80:7.
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`When asked why he added the “orientation . . . with respect to ground”
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`limitation to his level-of-skill-in-the-art definition, Wirtgen’s expert compounded
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`his error, explaining that he did so because “all the claims” in the ’530 patent
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`“relate to the machine orientation of the frame with respect to ground.” Id., 120:4-
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`22. Once again, claim 1 can cover a machine that has no idea where the ground is.
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`In sum, Wirtgen’s expert applies a level-of-skill-in-the-art definition that allows
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`him to improperly narrow his analysis to focus on unclaimed features. This is
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`symptomatic of the broader flaws described above that contaminate Wirtgen’s
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`claim 1 analysis. The Board should not adopt Dr. Lumkes’s definition.
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`16
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`5. Wirtgen Challenges Mr. Labus’s Level-of-Skill Definition
`Despite Admissions from its Expert Stating that the
`Differences in the Parties’ Definitions Are
`“Inconsequential” to Validity
`Wirtgen challenges the level of skill in the art proposed by Caterpillar’s
`
`expert, Mr. Labus, arguing that his definition is too narrow and does not account
`
`for the fact that the claims are directed to road construction machines, not just
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`sensors. POR, 29-30. Notably, Caterpillar defined a level of skill for the ’530
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`patent in the ITC case that is identical to Mr. Labus’s definition here, and
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`Wirtgen’s expert, Dr. Lumkes, challenged Caterpillar’s definition for the same
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`reasons he proposes now. Ex. 1169, 125:25-128:19. In the ITC case, however, Dr.
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`Lumkes concluded that “even under Caterpillar’s incorrect definition [for level of
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`skill in the art], the definition would be inconsequential to the validity of the ’530
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`patent.” Id., 126:20-128:19 (emphasis added). Wirtgen cannot now contest Mr.
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`Labus’s definition, after conceding that any differences are “inconsequential.”
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`Wirtgen also incorrectly suggests that Mr. Labus lacks sufficient experience
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`to qualify as a POSITA because he did not obtain a bachelor’s degree in
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`mechanical or electrical engineering. POR, 30. Mr. Labus served as a professor in
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`the mechanical engineering department of a specialized engineering university for
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`over 25 years. Ex. 1150, Appendix A at 106. Next, Wirtgen’s contention that Mr.
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`Labus has never inspected a road milling machine (POR, 30) is belied by the fact
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`17
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`that he has done design work on road construction machines. Ex. 2020, 15:4-21.
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`Indeed, Mr. Labus’s vast experience with the application of sensors on mobile
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`construction machines makes him more qualified to testify than Wirtgen’s expert,
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`who never worked on the design of a cold planer before this case and obtained his
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`expertise by working on other machines. Id., 10:21-19:2; Ex. 1169, 10:16-11:11.
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`Wirtgen’s challenges to Caterpillar’s level of skill in the art lack merit.2
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`B.
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`Because Wirtgen Provides No Independent Argument on Claims
`2-7, 13-15, 19-24, and 26, These Claims Should Be Invalidated if
`Claim 1 is Invalidated
`Caterpillar challenged claims 1-7, 13-24, and 26 in its Petition. In its
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`response, Wirtgen provided no independent prior-art analysis on claims 2-7, 13-15,
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`19-24, and 26, all of which depend from claim 1. Thus, if the Board invalidates
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`claim 1, it should also invalidate claims 2-7, 13-15, 19-24, and 26.
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`2 Although Mr. Labus proposed a slight modification to his level-of-skill-in-the-art
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`definition at his deposition by adding “application” after “design,” he testified that
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`this modification has no impact on his invalidity analysis. Ex. 2020, 191:19-192:5.
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`Indeed, this modification is minor compared to the changes Dr. Lumkes made to
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`his level-of-skill-in-the-art definition.
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`18
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`C. The Synchronous Leg Movement Limitations in Claims 16 and 17
`Do Not Make Those Claims Nonobvious
`Claims 16 and 17 depend from claims 1 and 2. Wirtgen does not argue that
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`the controller limitation in claim 2 provides a basis for patentability. Indeed, its
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`expert admitted that Swisher “discloses a controller that uses an elevation sensor to
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`extend and retract hydraulic cylinders in the legs.” Ex. 1169, 134:2-135:12; Ex.
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`1162, 344:13-17; Ex. 1105, 18:50-19:8. Claims 16 and 17 merely add the broad
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`concept of raising or lowering the legs “synchronously.” Caterpillar’s expert
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`explained that “synchronously” means that the legs move “at the same time,” but
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`not necessarily “at the same rate.” Ex. 2020, 100:16-101:3.
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`Davis renders this fundamental concept of synchronous leg movement
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`obvious. As part of its parameter setting cycle (a calibration process) performed
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`before milling begins, the Davis machine raises all four legs to a “maximum
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`extension” point, and then lowers them until the milling drum touches the ground.
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`Ex. 1107, ¶¶[0044-0045]. Mr. Labus explains that there are only two ways to raise
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`or lower the legs during this calibration process—synchronously (i.e., at the same
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`time) or asynchronously (i.e., not at the same time). Ex. 1150, ¶163-171. Mr.
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`Labus then explained that a synchronous approach was preferable because “raising
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`the cylinders in a non-synchronous fashion—e.g., one at a time—increases the risk
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`of causing an instability of the apparatus.” Id., ¶166. Put differently, there are a
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`19
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`finite number of predictable prior-art solutions for moving the legs, and claims 16
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`and 17 merely claim one such option. This meets KSR’s obviousness standard.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007) (obviousness finding is
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`appropriate where there are “a finite number of identified, predictable solutions”).
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`Wirtgen’s arguments on claims 16 and 17 (POR, 55-57) apply an overly strict
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`obviousness standard that does not comport with KSR, and therefore should be
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`rejected.
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`D. The “Equal Amounts” Limitation in Claim 18 Does Not Make the
`Claim Nonobvious
`Like claims 16 and 17, claim 18 depends from claims 1 and 2. Claim 18
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`describes controller that moves the machine frame “by adjusting the heights of all
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`the lifting columns by equal amounts.” As mentioned, Swisher discloses a
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`controller that uses signals from sensors to move the machine frame by extending
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`and retracting hydraulic cylinders in the legs. Ex. 1105, 18:50-19:8; Ex. 1169,
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`134:2-135:12. So does Davis. Ex. 1107, Abstract, ¶¶[0005, 0032-33, 0043-45]. The
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`only sliver of claim language left in claim 18 is the fundamental concept of moving
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`the legs by “equal amounts.” But Davis discloses this too and renders the concept
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`obvious.
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`As mentioned, Davis discloses a functionality that involves moving the legs,
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`and thus the frame, of a road construction machine to a “maximum extension”
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`20
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`point, before lowering the legs until the milling drum is touching and parallel to the
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`Case No. IPR 2017-02188
`Petitioner’s Reply
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`road surface. Ex. 1107, ¶¶[0044-0045]. On flat ground, this maneuver would result
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`in “adjusting the heights of all the lifting columns by equal amounts,” just as claim
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`18 requires. Ex. 1150, ¶174. Wirtgen contends that Caterpillar’s argume
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