Trials@uspto.gov
`571-272-7822
`
`
` Paper 17
`
`Entered: February 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before HUBERT C. LORIN, JENNIFER S. BISK, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`TETRA TECH CANADA INC.,
`Petitioner,
`
`v.
`
`GEORGETOWN RAIL EQUIPMENT COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01581
`Patent 8,081,320 B2
`____________
`
`
`
`
`FINAL WRITTEN DECISION
`Determining all Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`571-272-7822
`
`
` Paper 17
`
`Entered: February 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before HUBERT C. LORIN, JENNIFER S. BISK, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`TETRA TECH CANADA INC.,
`Petitioner,
`
`v.
`
`GEORGETOWN RAIL EQUIPMENT COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01581
`Patent 8,081,320 B2
`____________
`
`
`
`
`FINAL WRITTEN DECISION
`Determining all Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2019-01581
`Patent 8,081,320 B2
`
`I. INTRODUCTION
`Tetra Tech Canada Inc. (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–17 of U.S. Patent No. 8,081,320 B2
`(Ex. 1001, “the ’320 patent”). Paper 1 (“Pet.”). Georgetown Rail
`Equipment Company (“Patent Owner”), identified as the owner of and real
`party in interest to the ’320 patent (Paper 5, 2), did not file a Preliminary
`Response. We instituted this review as to all challenged claims. Paper 6
`(“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 8 (“PO Resp.”). Petitioner filed a Reply. Paper 9
`(“Reply”). Patent Owner also filed a Sur-Reply. Paper 11 (“Sur-Reply”). A
`transcript of the oral hearing held on December 3, 2020, has been entered
`into the record as Paper 16 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claims 1–17 of the ’320 patent are unpatentable.
`
`A. Related Matters
`The parties identify a district court case in which the ’320 patent was
`previously asserted, but later was withdrawn from the proceeding. Pet. 5;
`Paper 5, 2. Petitioner adds that related patents, U.S. 7,616,329 (the “’329
`patent”) and U.S. 9,441,956 (the “’956 patent”) remain in that proceeding.
`Pet. 5. In addition, Canadian national stage entries of the ’320 and ’329
`patents were the subject of Canadian litigation. Pet. 4. Finally, Petitioner
`notes that both the ’329 and ’956 patents, as well as related patent U.S.
`8,209,145, are the subject of petitions for inter partes review. Id. at 5 (citing
`IPR2019-00619, IPR2019-00620, IPR2019-00662, and IPR2019-01409).
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`B. The ’320 Patent
`The ’320 patent, titled “Tilt Correction System and Method for Rail
`Seat Abrasion,” issued December 20, 2011. Ex. 1001, codes (45), (54). The
`’320 patent relates generally to inspecting railroad surfaces. Id. at 1:26–29.
`In particular, the ’320 patent addresses the problem of rail seat abrasion,
`which is wear at the point of a railroad track where the two parallel rails are
`attached to the crossties. Id. at 1:52–59. According to the ’320 patent,
`previous methods of measuring and monitoring this wear “have proved
`either unreliable, hazardous, labor-intensive, requiring extensive equipment
`installation, or having a major impact on the availability of railroads to train
`traffic.” Id. at 2:6–12.
`In response to these difficulties, the ’320 patent describes a railroad
`inspection vehicle with mounted lasers, cameras, and processors that take
`precise measurements of the height of the rail and the tie. Id. at 2:22–43.
`The ’320 patent then describes “adjusting these measurements for any
`expected tilt encountered.” Id.
`
`The ’320 patent describes an example of determining the wear of the
`rails using image data. Figures 7A and 7B are reproduced below.
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`Figures 7A and 7B, above, “illustrate example [image data] frames of
`
`railroad track obtained with the disclosed inspection system for determining
`wear of the rail.” Id. at 3:4–6. Figure 7A shows frame F1 at position Z1
`along the track, and Figure 7B shows frame F2 at position Z2. Id. at 9:35–
`39, 9:43–44, 9:51–52. Each frame shows rail 12 lying within a region of
`interest R and at level L above reference level L2, which may be the height
`of a tie plate—measurement LD. Id. at 9:43–48. Figure 7B shows that “[a]t
`position Z2, the distance LD is less between the contour of the rail 12 and
`level L2 than at position Z1” and “[t]hus, frame F2 may indicate wear of the
`rail 12 at the position Z2 along the track.” Id. at 9:52–55.
`Using data such as that shown in Figures 7A and 7B, the ’320 patent
`explains that “rail seat abrasion may be predicted with a high level of
`accuracy” using “algorithms that adjust for vehicle tilt.” Id. at 12:49–53.
`Vehicle tilt occurs when inspection system 30 moves through curves or
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`bends in the track resulting in “a suspension lean of the system 30” and “the
`railroad track itself leaning either to the left or right in the field of the
`cameras.” Id. at 12:53–59. Figure 17 is reproduced below.
`
`
`
`Figure 17, above, “illustrates a profile image of a rail road track tilted
`[within a curve] according to an exemplary embodiment of the present
`invention.” Ex. 1001, 3:27–29. In Figure 17, “left and right rails 12 are
`illustrated laying atop concrete tie 10.” Id. at 12:66–13:1. “Line L3
`represents level ground” and line L4 shows the angular tilt of cross ties 10.
`Id. at 13:1–5. To determine whether rail seat abrasion is present, height
`measurement of each rail is taken, however, a tilt in the camera may cause
`one rail to appear higher than another. For example, in Figure 17, because
`the track is tilting slightly to the left, “the height of right rail 12 would
`appear taller then left rail 12, resulting in skewed data measurements.” Id.
`at 13:5–10. The ’320 patent states that empirical and mathematical research
`has determined that a standard tilt correction factor of 0.12 is incorporated
`into algorithms to adjust for tilt. Id. at 13:11–17. Figure 18, “a flow chart
`illustrating a method of determining rail seat abrasion,” is reproduced below.
`Id. at 3:30–32.
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`Figure 18, above, shows a flow chart for a tilt correction algorithm.
`Id. at 13:18–20. Step 100 describes taking measurements of the rail base
`height of each rail from the image data received from the cameras and, in
`step 102, the inspection system records those measurements. Id. at 13:18–
`44. In step 104, the inspection system derives the tilt correction factor and
`step 106 determines the actual difference between the right and left rail
`bases. Id. at 13:45–60. Finally, in step 108, the rail seat abrasion value for
`the right and left rail bases is determined, after which those values are output
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`(step 110) and the next frame is analyzed (step 112) using the algorithm
`starting in step 100. Id. at 13:61–14:13.
`
`C. Illustrative Claim
`Claims 1, 7, and 12 are independent. Claim 1 is illustrative of the
`
`subject matter at issue and reads as follows:
`1. [preamble] A system for determining rail seat abrasion of a
`rail road track, the system comprising:
`[a] at least one light generator positioned adjacent the rail
`road track, the light generator adapted to project a beam
`of light across the rail road track;
`[b] at least one camera positioned adjacent the rail road
`track for receiving at least a portion of the light reflected
`from the rail road track and for generating at least one
`image representative of a profile of at least a portion of
`the rail road track;
`[c] at least one processor adapted to perform the steps
`comprising:
`[d] analyzing the at least one image; and
`[e] determining whether rail seat abrasion is
`present along the rail road track,
`[f] wherein, when determining whether rail seat abrasion
`is present, the at least one processor compensates for a
`tilt of the rail road track.
`Ex. 1001, 15:38–55 (bracketing added consistent with Petitioner’s
`analysis of claim limitations “[preamble]–[f]”; see Pet. 32–54).
`
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`D. Proposed Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 103(a)1:
`35 U.S.C. §
`Claim(s) Challenged
`1, 2, 5–7, 10–13, 16, 17 103(a)
`3, 8, 14
`
`103(a)
`
`4, 9, 15
`
`103(a)
`
`Reference(s)/Basis
`Villar,2 Choros, 3 Casagrande,4
`Szwilski5
`Villar, Choros, Casagrande,
`Szwilski, Khattak6
`Villar, Choros, Casagrande,
`Szwilski, Andersson7
`
`Pet. 8, 19–63. Petitioner also relies on the Declaration of Nikos
`Papanikolopoulos, Ph.D. (Ex. 1004).
`Patent Owner disputes each of these grounds of unpatentability and
`relies on the Declaration of Alan Conrad Bovik, Ph.D. (Ex. 2001) as
`supporting its position. PO Resp. 4–43.
`
`
`1 Because the application from which the ’320 patent issued was filed
`before March 16, 2013, the effective date of the relevant amendment, he pre-
`AIA version of § 103 applies. The Leahy-Smith America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35
`U.S.C. § 103.
`2 U.S. 2006/0017911 A1 (published Jan. 26, 2006) (Ex. 1005).
`3 John Choros et al., Prevention of Derailments due to Concrete Tie Rail
`Seat Deterioration, 2007 ASME/IEEE Joint Rail Conference & Internal
`Combustion Engine Spring Technical Conference (2007) (Ex. 1007, 4–17).
`4 U.S. 2003/0140509 A1 (published July 31, 2003) (Ex. 1008).
`5 WO 2005/036199 A2 (published Apr. 21, 2005) (Ex. 1009).
`6 U.S. 4,899,296 (issued Feb. 6, 1990) (Ex. 1010).
`7 U.S. 5,787,815 (issued Aug. 4, 1998) (Ex. 1011).
`8
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`II. ANALYSIS
`
`A. Principles of Law
`
`1. Burden
`“[T]he petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a) (3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden of persuasion never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (discussing the burden of proof in inter partes review).
`2. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art (“POSITA”)
`to which that subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007). The question of obviousness is resolved based on
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.8 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`
`8 Patent Owner has provided no objective evidence of non-obviousness in
`this case and, thus, we focus our inquiry on the remaining Graham factors.
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`In analyzing the obviousness of a combination of prior art elements, it
`
`can be important to identify a reason that would have prompted one of skill
`in the art “to combine . . . known elements in the fashion claimed by the
`patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. Id. Rather, “any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent can provide a
`reason for combining the elements in the manner claimed.” Id. at 420.
`Accordingly, a party that petitions the Board for a determination of
`unpatentability based on obviousness must show that “a skilled artisan
`would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal
`quotation marks and citations omitted). Under the proper inquiry,
`“obviousness cannot be avoided simply by a showing of some degree of
`unpredictability in the art so long as there was a reasonable probability of
`success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
`
`We analyze the instituted grounds of unpatentability in accordance
`with these principles.
`3. Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. See Al-Site
`Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
`Graham, 383 at 17–18). The level of skill in the art also informs the claim
`construction analysis. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
`
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`831, 841 (2015) (explaining that claim construction seeks the meaning “a
`skilled artisan would ascribe” to the claim term “in the context of the
`specific patent claim” (emphasis omitted)).
`Petitioner asserts that a person of ordinary skill in the art “would have
`a bachelor’s degree in electrical engineering, computer engineering,
`mechanical engineering, computer science, physics, or a related field, and at
`least four years of experience (or the academic equivalent) in the field of
`computer or machine vision.” Pet. 16–17 (citing Ex. 1004 ¶ 29). Patent
`Owner “does not contest Petitioner’s asserted level of ordinary skill in the
`art.” PO Resp. 1.
`Based on our review of the record, we adopt Petitioner’s definition of
`the level of ordinary skill in the art. This level is consistent with that
`reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
`of skill in the art does not give rise to reversible error ‘where the prior art
`itself reflects an appropriate level and a need for testimony is not shown.’”).
`
`B. Claim Construction
`For petitions filed on or after November 13, 2018, such as the one in
`this case, we interpret claims in the same manner used in a civil action
`under 35 U.S.C. § 282(b), “including construing the claim in accordance
`with the ordinary and customary meaning of such claim as understood by
`one of ordinary skill in the art and the prosecution history pertaining to the
`patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy
`need to be construed, and then only to the extent necessary to resolve the
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
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`
`Petitioner does not offer any constructions for any terms of the
`challenged claims, and indicates that “[t]he terms from the claims of
`the ’320 patent should be given their plain and ordinary meaning.” Pet. 17.
`Patent Owner “agrees with the Petitioner that the ’320 patent terms should
`be given their plain and ordinary meaning.” PO Resp. 1. Based on the
`parties’ arguments, however, we discuss the term “standard tilt correction
`factor.”
`Claim 4 recites “where the step of determining the tilt correction
`factor [recited by claim 2] is accomplished based upon the left and right rail
`base heights and a standard tilt correction factor.” Ex. 1001, 16:6–9
`(emphasis added).
`The parties appear to disagree over the construction of “standard tilt
`correction factor.” Petitioner does not explicitly address the construction of
`this term in the Petition, but does imply a broad construction in its analysis
`asserting that Andersson discloses the claimed standard tilt correction factor.
`Pet. 74–75. Consistent with this analysis, in the Reply, Petitioner asserts
`that “[n]othing in the claim’s plain language precludes the standard tilt
`correction factor from being a sub-category of claim [2]’s tilt correction
`factor, such as one developed to pre-emptively compensate imaged
`measurements for known vertical alignment tilt errors associated with
`upcoming track geometries.” Reply 24. Petitioner adds that it would be
`improper to read into the term the exemplary embodiment of the ’320 patent
`“describing a tilt correction factor incorporated into algorithms to adjust for
`tilt caused by variations in vehicle suspension, rail height placement stands,
`and other facts unrelated to rail seat abrasion.” Id. at 25. Finally, Petitioner
`asserts that “neither the claim’s plain language nor the specification
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`require[s] applying the same standard tilt correction factor along each
`section of the track.” Id.
`Patent Owner asserts that the term “standard tilt correction factor”
`must be different than claim 2’s recited “tilt correction factor” based on the
`plain difference in the wording and claim differentiation. PO Resp. 39; Sur-
`Reply 24. According to Patent Owner, “standard tilt correction factor” “is
`not merely based on the simple error in vertical height measurements based
`on tilt of the railway, but instead factors in ‘variations in vehicle suspension’
`and ‘rail height placement standards,’ among other ‘factors unrelated to rail
`seat abrasion.’” PO Resp. 40 (citing Ex. 2001 ¶ 121). Further, Patent
`Owner contends that “the factor is a fixed factor applied to all curves and
`other parts of the railway” based on the Specification’s statement that it is a
`fixed number—0.12. Id.; Ex. 1001, 13:11–15 (“[D]uring significant
`empirical and mathematical research for the present invention, a standard tilt
`correction factor of 0.12 was determined. This tilt correction factor is
`incorporated into algorithms of the present invention in order to adjust for
`tilt caused by variations in vehicle suspension, rail height placement
`standards, and other factors unrelated to rail seat abrasion.”).
`We agree with Patent Owner that, based on the plain and ordinary
`meaning of the word “standard,” the terms “tilt correction factor” and
`“standard tilt correction factor” are distinct. We, however, do not agree with
`Patent Owner that the term “standard tilt correction factor” is limited to a
`fixed factor for all parts of a railway.
`A claim term, such as the term “standard” in the claim phrase “a
`standard tilt correction factor” that is at issue here, bears a “heavy
`presumption” that the ordinary meaning one skilled in the art would attribute
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`to said term applies. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002) (“Generally speaking, we indulge a ‘heavy
`presumption’ that a claim term carries its ordinary and customary meaning.”
`(citations omitted)). The ordinary meaning of the term “standard” is
`“something established for use as a rule or basis of comparison in measuring
`or judging capacity, quantity, content, extent, value, quality, etc. [standard of
`weight and measure].” Ex. 3001 (Webster’s New World Dictionary, Third
`College Edition, 1306 (1988)), entry 2. We do not see in the ordinary
`meaning any basis for further qualification that a “standard” must be fixed
`rather than “variable” as Patent Owner contends.
`The ordinary meaning of “standard” can be restricted “if the intrinsic
`evidence shows that the patentee limited the scope of the claims.” Alloc,
`Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1377 (Fed. Cir. 2003) (citing,
`inter alia, Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000) (“One
`purpose for examining the specification is to determine if the patentee has
`limited the scope of the claims.”)). The Specification recites the term
`“standard” in the context of “a standard tilt correction factor” seven times.
`Ex. 1001, 13:12, 14:42, 14:64, 15:26, 16:8 (claim 4), 16:36, 17:3. Only at
`column 13, line 12 is the “standard” further elaborated upon. The other
`instances simply state “a standard tilt correction factor.”
`The more detailed discussion of the “standard tilt correction factor” at
`column 13, line 12 of the Specification relates to an exemplary embodiment
`that is depicted in Figure 17, reproduced below.
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`Figure 17 of the ’320 patent “illustrates a profile image of a rail road track
`tilted according to an exemplary embodiment of the present invention.”
`Ex. 1001, 3:27–29. “[L]eft and right rails 12 are illustrated laying atop
`concrete tie 10” and “[l]ine L3 represents level ground.” Id. at 12:66–13:1.
`This exemplary embodiment represents a curve with an inspection system
`“moving along the track resulting in an angular tilt of cross ties 10
`represented by line L4” such that the track is “tilting slightly to the left.” Id.
`13:1–6. To determine whether rail seat abrasion/deterioration (“RSA”) is
`present, height measurements of both rails 12 must be taken. Id. at 13:6–8.
`Because the height of right rail 12 would appear taller than left rail 12, the
`resulting data measurements would be skewed. Id. at 13:8–10.
`“Accordingly, during significant empirical and mathematical research for the
`present invention, a standard tilt correction factor of 0.12 was determined,”
`which “is incorporated into algorithms of the present invention in order to
`adjust for tilt caused by variations in vehicle suspension, rail height
`placement standards, and other factors unrelated to rail seat abrasion.” Id.
`at 13:11–16.
`However, this disclosure does not state that the determined standard
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`tilt correction factor of 0.12 is used in every embodiment. Instead, this value
`is tied to the disclosure of Figure 17, which is an “exemplary embodiment.”
`See id. at 12:63–67. This example specifically associates the value of 0.12
`with, inter alia, a track “tilting slightly to the left” (id. at 13:5–6) and where
`the “height of right rail 12 [of Figure 17] would appear taller then [sic] left
`rail 12” (id. at 13:9–10). Claim 4 is not limited to this context. Claim 4
`does not mention, for instance, the track tilting to the left. In fact, claim 2,
`from which claim 4 depends, requires “determining a height of a left rail,
`right rail” to “compensate[] for the tilt of the rail road track.” Id. at 15:57–
`59. Accordingly, claim 4 covers compensating for tilts in other directions.
`Patent Owner argues that “[i]t is a ‘well-established’ principle ‘that a
`claim construction that excludes a preferred embodiment is “rarely, if ever,
`correct.”’” Sur-Reply 25 (quoting Dow Chem. Co. v. Sumitomo Chem. Co.,
`257 F.3d 1364, 1378 (Fed. Cir. 2001)). However, adopting a broad
`interpretation of the term “standard tilt correction factor” does not exclude
`an embodiment using a fixed value for every section of the railway. Instead,
`such an interpretation would allow for such an embodiment, but would not
`limit the claim to such an embodiment.
`Also, limiting claim 4 to read on said exemplary embodiment would
`necessarily exclude all other values for “a standard tilt correction factor” that
`claim 4 would otherwise encompass from a plain reading of the claim. But
`the standard for disavowal of claim scope is exacting. “The patentee may
`demonstrate intent to deviate from the ordinary and accustomed meaning of
`a claim term by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope.”
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`
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`Here, we do not see expressed in the Specification any intention to restrict
`the “standard” that one of skill in the art may employ as “a standard tilt
`correction factor” to practice the claimed subject matter. Cf. Home
`Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004)
`(“Absent a clear disavowal in the specification or the prosecution history,
`the patentee is entitled to the full scope of its claim language.”).
`
`Finally, as to Patent Owner’s assertion that the term “standard tilt
`correction factor” in claim 4 must be different than claim 2’s “tilt correction
`factor” based on the plain difference in the wording and claim differentiation
`(PO Resp. 39), we agree that claim 4 calls for determining the claim 2 “tilt
`correction factor” “based upon . . . a standard tilt correction factor” and,
`thus, they must be different in terms of what they represent; that is, the
`“standard tilt correction factor” is a standard against which the claim 2 “tilt
`correction factor” is compared. But that does not mean they are different in
`terms of their values. Their values could match
`
`For the foregoing reasons, we decline to limit “standard tilt correction
`factor” to a fixed or specific value, as proposed by Patent Owner. Because
`nothing more specific is needed for analysis of the issue in this Decision, we
`do not further construe this term.
`
`C. Overview of Prior Art References
`
`1. Villar
`Villar is titled “System and Method for Inspecting Railroad Track.”
`Ex. 1005, code (54). The named inventors of Villar—Christopher M. Villar,
`Steven C. Orrell, and John Anthony Nagle, II—are the same as those named
`in the ’320 patent, and both Villar and the ’320 patent claim priority to U.S.
`
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`Patent 8,081,320 B2
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`provisional application No. 60/584,769, filed June 30, 2004.9 Ex. 1001,
`code (60); Ex. 1005 ¶ 1. In fact, Villar and the ’320 patent appear to share
`much of the same written description, and Villar’s twelve figures appear to
`be identical to the first twelve figures of the ’320 patent. Compare Ex. 1001
`Figs. 1–12 and 1:24–10:52 with Ex. 1005 Figs. 1–12 and ¶¶ 1–56.
`Specifically, Villar describes a system, similar to the ’320 patent’s
`railroad inspection vehicle system, with mounted lasers, cameras, and
`processors that can analyze the captured images to determine various
`measurable aspects of the railroad track. Ex. 1005 ¶ 8. Villar also describes
`the example in the ’320 patent of determining the wear of rails using image
`data. Ex. 1005, Figs. 7A, 7B, ¶¶ 17, 50. Villar, however, does not explicitly
`discuss rail seat abrasion or contain a description of algorithms that adjust
`for vehicle tilt, as does the ’320 patent. See Ex. 1001 Figs. 17, 18, 12:49–
`14:14.
`1. Choros
`a. Overview
`Choros is titled “Prevention of Derailments Due to Concrete Tie Rail
`Seat Deterioration.” Ex. 1007, 7. It describes “research on rail seat
`abrasion/deterioration and methods to measure and prevent derailments.” Id.
`Choros describes collecting data using “geometry cars” or inspectors using
`“an abrasion measurement gauge.” Id. at 11; see also id. at 13 (“As
`
`
`9 The ’320 patent is a continuation-in-part of application No. 12/465,473,
`filed on May 13, 2009, which is a continuation-in-part of application No.
`11/172,618, filed on June 30, 2005, now Patent No. 7,616,329 (the “’329
`patent”). The ’329 patent also claims priority to provisional application No.
`60/584,769, filed June 30, 2004. U.S. 7,616,329 B2, code (60).
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`measurement methodologies improve, either from automated inspection
`vehicles or hand held devices, then the curve given in Figure 9 and values in
`Table 2 can be adjusted to reflect the new field data.”).
`Figure 8, reproduced below, shows “rail rotation due to rail seat
`abrasion . . . for the five possible cases of concrete tie rail seat abrasion that
`are found in high curvature track.” Id. at 11.
`
`
`Figure 8, above, shows a rail with the left labeled “Gage Side” and the right
`labeled “Field Side.” Id. at 12. It labels five cases (labeled “Case 1”
`through “Case 5”) of potential abrasion measurements taken at the field side
`between the rail base and the concrete tie, with each case showing an outline
`of the associated rotation of the rail due to the RSA. Id. at 11. “Two
`readings are required one on each side of the concrete tie as viewed from the
`field side to the centerline of the track.” Id. In addition, the label “Pivot
`point” on the lower left of the rail shows the related pivot point for each of
`the five cases, and the label “Abrasion Measurement” shows the amount of
`displacement between the rail and tie. Id. at 12.
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`Table 1 provides a description of each of the five cases shown in
`Figure 8 (id. at 11–12) and Table 2 describes maximum abrasion for various
`classes of track found on the track safety standards for case 4, the worst case
`scenario (id. at 13–14).
`b. Prior Art Status
`Patent Owner contends that “[t]he Petition fails to establish that
`Choros is a printed publication under the patent statute.” PO Resp. 2; Sur-
`Reply 1.
`Choros is an article appearing at pages 173 to 181 of a book (“the
`volume”) titled “Proceedings of the ASME//IEEE Joint Rail Conference and
`the ASME Internal Combustion Engine Division Spring Technical
`Conference -2007-.” Ex. 1007, 5. The cover page of the volume states that
`the papers were presented at the named conference on March 13–16, 2007 in
`Pueblo, Colorado. Id. The next page of the volume includes the text “ISBM
`No. 0-7918-4787-X” and “Copyright © 2007 by ASME, All Rights
`Reserved, Printed in U.S.A.” Id. at 6. This page also shows a stamp in the
`upper left corner, “General Library System University of Wisconsin –
`Madison 728 State Street Madison, WI 53706-1494 U.S.A.” Id.
`The Declaration of Rachel J. Watters, “a librarian, and the Director of
`Wisconsin TechSearch (‘WTS’), . . . an interlibrary loan department at the
`University of Wisconsin-Madison,” includes as Exhibit A an abridged copy
`of the volume in which Choros appears and as Exhibit B a copy of the
`cataloging system record for the University’s copy of the volume. Id. at 1–3
`(Watters Declaration), 17 (Exhibit B cataloging system record); see also Pet.
`7 (noting that Choros includes the “Declaration of Rachel J. Watters on
`Authentication of Publication”). Ms. Watters describes the standard
`
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`operating procedures for materials at the University of Wisconsin-Madison
`Libraries and states that the University “had [Choros] cataloged in the
`system as of July 11, 2007.” Id. at 2 (citing Ex. 2007, 17). According to
`Ms. Watters, “[m]embers of the interested public could have located
`[Choros] after it was cataloged by searching the public library catalog or
`requesting a search though WTS . . . by title, author, and/or subject key
`words.” Id. Ms. Watters further explains that such interested member of the
`public “could access the publication by locating it on the library’s shelves or
`requesting it from WTS.” Id.
`Patent Owner argues that the Petition’s citation to the Declaration of
`Rachel J. Watters is an improper incorporation by reference that does not
`satisfy the requirement to “include ‘a detailed explanation of the significance
`of the evidence.’” Id. (quoting 37 C.F.R. § 42.22(a)). We do not agree that
`the Petition improperly incorporates the Watters declaration by reference.
`Instead, the Petition properly relies on the Watters Declaration to support its
`contention that Choros is a printed publication. Although the Petition’s
`discussion of the issue is succinct, and reference to the Watters Declaration
`is in a parenthetical citation, we are not persuaded that any more was
`necessary. The Watters Declaration consists of two pages of straightforward
`testimony supporting Petitioner’s uncomplicated position that Choros was
`published in 2007 and, therefore, no further explanation was necessary prior
`to any dispute on this issue.
`Patent Owner also contends that the Petition fails “to prove that
`Choros was publicly accessible.” PO Resp. 2; Sur-Reply 2. Specifically,
`Patent Owner argues the “declaration does not indicate how a POSITA could
`locate Choros prior to the critical date by exercising reasonable diligence.”
`
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`PO Resp. 3. According to Patent Owner, the declaration describes how a
`member of the interested public could locate the overall proceed
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