Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Date: May 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GODBERSEN-SMITH CONSTRUCTION COMPANY
`d/b/a/ GOMACO CORPORATION,
`Petitioner,
`v.
`GUNTERT & ZIMMERMAN CONST. DIV., INC.,
`Patent Owner.
`
`IPR2020-01698
`Patent 10,029,749 B2
`
`
`
`
`
`
`
`
`
`Before JOHN P. PINKERTON, TIMOTHY J. GOODSON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`INTRODUCTION
`I.
`A. Background and Summary
`Godbersen-Smith Construction Company, d/b/a GOMACO
`Corporation, (“Petitioner”), filed a Petition (“Pet.”) requesting inter partes
`review of claims 1–20 (the “Challenged Claims”) of U.S. Patent
`
`
`
`
`
`
`
`
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 1
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`No. 10,029,749 B2 (Ex. 1001, the “’749 patent”). Paper 1. Guntert &
`Zimmerman Const. Div., Inc. (“Patent Owner”) filed a Preliminary
`Response (“Prelim. Resp.”) to the Petition. Paper 7.1
`With our authorization (Paper 10), Petitioner filed a Preliminary
`Reply (Paper 13, “Prelim. Reply”) to the Patent Owner Preliminary
`Response and Patent Owner filed a Preliminary Sur-reply (Paper 16,
`“Prelim. Sur-reply”) to the Preliminary Reply.2
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (permitting the
`Board to institute trial on behalf of the Director). To institute an inter partes
`review, we must determine that the information presented in the Petition
`shows “a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, upon considering the Petition, Preliminary
`Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record,
`we institute an inter partes review.
`B. Real Parties in Interest
`Petitioner identifies Godbersen-Smith Construction Company, “for
`which GOMACO Corporation is a registered active fictitious name,” as the
`real party-in-interest. Pet. 110. Petitioner contends that “[n]o unnamed
`entity is funding, controlling, or otherwise has an opportunity to control or
`direct this Petition or Petitioner’s participation in any resulting” inter partes
`review. Id.
`Patent Owner identifies itself as the real party-in-interest. Paper 5, 1.
`
`1 We refer to the public version of the Patent Owner Preliminary Response.
`2 We refer to the public versions of the Preliminary Reply and Preliminary
`Sur-reply.
`
`2
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 2
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`C. Related Matters
`Petitioner and Patent Owner state that they are parties to ongoing
`litigation involving the ’749 patent in the U.S. District Court for the
`Northern District of Iowa, in a case styled Zimmerman Const. Div., Inc. v.
`GOMACO Corp., case no. 5:20-cv-4007-CJW-KEM. Pet. 110, Paper 5, 1.
`D. ‘749 Patent
`The ’749 patent, titled “Automatically Adjusting Swing Legs for
`Mounting and Aligning and Reorienting Crawlers,” issued July 24, 2018,
`from an application filed January 17, 2018. Ex. 1001, codes (54), (45), (22).
`The ’749 patent ultimately claims priority, through both continuation and
`continuation-in-part applications, to a provisional patent application filed
`March 26, 2010. Id. at 1:8–19.
`The ’749 patent is directed to “concrete slipform paving machines.”
`Ex. 1001, 1:23–24. We reproduce Figure 1 from the ’749 patent below.
`
`
`
`3
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 3
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Figure 1 depicts “a front elevational, perspective view of a complete paving
`machine having pivotable swing legs with a jacking column and a crawler.”
`Id. at 7:56–58. Paving machine 2 includes tractor frame 4, which is defined
`by center module 6. Id. at 8:47–49. Side bolsters 12 are secured to support
`beams 10, and upright jacking columns 14 are mounted near the ends of the
`bolsters. Id. at 8:52–57. Crawlers 16 are mounted to the lower ends of the
`jacking columns, and the crawlers are rotatable relative to the jacking
`columns about vertical axes, an arrangement that is known in the art.” Id. at
`8:59–8:63.
`Each crawler 16 and its associated jacking column 14 are mounted to
`one of four swing legs 20. Ex. 1001, 9:24–26. Swing legs 20 are mounted
`to side bolsters 12 using hinge brackets 28, which allow the swing legs to
`move relative to the side bolsters, with hydraulic actuator 38 used to pivot
`the swing legs. Id. at 9:26–53; Figs. 2, 3.
`Whenever swing legs 20 are pivoted inwardly or outwardly relative to
`tractor frame 4, the orientation of the crawler track has to be changed to keep
`the track oriented in the paving direction. Ex. 1001, 10:46–55. This change
`in crawler orientation may be done either with the crawler off the ground or
`as the paving “machine is walking forward or backward.” Id. at 10:55–11:3.
`To affect this change, rotary actuator 60 is positioned between the bottom of
`each jacking column and each crawler. Id. at 11:35–56; Fig. 4.
`Each swing leg assembly includes two angular position transducers or
`sensors—transducers 70, 78. Ex. 1001, 11:57–60, 12:20–22, Figs. 4A, 5.
`These transducers generate signals indicating any changes in the angular
`orientation of crawler yoke 62 relative to jacking column 14 or the swing leg
`relative to the side bolster. Id. at 12:1–6, 23–31. The ’749 patent describes
`using transducers 70, 78 in a feedback loop to automatically adjust the
`
`4
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 4
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`angular orientation of the crawler tracks without having to stop the machine
`or manually adjust the tracks or swing legs:
`Onboard computer or processor 82 and the associated
`transducers 70, 78 form a feedback loop in which the computer
`receives the angular position signal from swing leg transducer
`78. When the angular position of the swing leg changes, the
`output signal from transducer 78 changes correspondingly. As a
`result of this orientational change of the swing leg, the angular
`orientation of the crawler tracks becomes angularly inclined
`relative to paving direction 18. Computer 82 calculates by how
`much the angle of the crawler track has to be changed relative to
`the jacking column (which has also been angularly offset relative
`to the transport direction by the swivel motion of the swing leg)
`to reset the crawler track suspended from yoke 62 to the angular
`orientation of the desired paving direction. The onboard
`computer then signals by how much worm gear drive 60 must
`rotationally adjust the orientation of yoke 62 and crawler tracks
`16 to again align the crawler tracks with the paving direction.
`This process is repeated each time the angular position of the
`swing leg is changed, or when for other reasons the angular
`orientation of the crawler tracks becomes misaligned from the
`desired paving direction of the machine.
`Id. at 12:38–64.
`E. Illustrative Claims
`Of the Challenged Claims, claims 1 and 17 are independent claims.
`Claim 1, reproduced below, is representative.
`1. A swing leg assembly, comprising:
`a swing leg configured to mechanically couple with a
`surface of a module frame;
`a crawler track;
`an upright jacking column secured to the swing leg, having
`a rotary connection between the jacking column and the crawler
`track permitting relative rotational movements of the crawler
`track and the jacking column about a first upright axis;
`a first angular position transducer between the jacking
`column and the crawler track, configured to emit a first signal
`
`5
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 5
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`which is indicative of an angular orientation of the crawler track
`relative to the jacking column;
`a second angular position transducer between the swing
`leg and the module frame, configured to emit a second signal
`which is indicative of an angular orientation of the swing leg
`relative to the module frame;
`a power drive between the jacking column and the crawler
`track, configured for translating relative rotational movements
`between the jacking column and the crawler track; and
`a processor operable to receive the first and second signals
`and configured to emit a control signal for activating the power
`drive and thereby rotationally move the crawler track relative to
`the jacking column to maintain an orientation of the crawler track
`in response to changes of the first signal caused by pivotal
`motions of the swing leg about an upright pivot shaft.
`Ex. 1001, 22:40–67.
`
`Claim 17 is similar to claim 1, but further recites additional
`components of a paving machine, including a “module frame” and “two or
`more swing leg assemblies,” with each assembly including the elements
`recited in claim 1. Id. at 23:54–24:33.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the Challenged Claims are unpatentable based
`on six grounds:
`Claim(s) Challenged
`1–11, 13–17, 19, 20
`18
`
`References/Basis
`CIII3, Rio4
`CIII, Rio, Smolders5
`
`35 U.S.C. §
`103
`103
`
`
`3 GOMACO, Corp., “Commander III New Generation Trimmer/Paver
`Operator Service Manual, G21 Controls,” Rev. 1.4 (2002) (Ex. 1005,
`“CIII”).
`4 Rio, et. al., US 7,523,995 B2, issued April 28, 2009 from an application
`filed July 14, 2005 (Ex. 1006, “Rio”).
`5 Smolders et al., US 6,481,924 B1, issued November 19, 2002 (Ex. 1010,
`“Smolders”).
`
`6
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 6
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`References/Basis
`35 U.S.C. §
`Claim(s) Challenged
`CIII, Littman6
`103
`1–10, 13–17, 19, 20
`CIII, Littman, Smolders
`103
`18
`CIII, Rio, Widdrington7
`103
`11, 12
`CIII, Littman, Widdrington
`103
`11, 12
`Petitioner relies on the declaration testimony of Dr. William Singhose
`(Ex. 1002) in support of these grounds.
`The following subsections provide brief descriptions of the asserted
`prior art references.
`1. CIII
`CIII, titled “Commander III New Generation Trimmer/Paver Operator
`Service Manual, G21 Controls,” is an operating manual for the Gomaco
`Commander III, one of Petitioner’s paving machines. See Ex. 1005, 4. CIII
`indicates that it is revision number 1.4 and includes a copyright date of 2002.
`Id. at 3.
`We reproduce an annotated version of a drawing of the CIII paver,
`below.
`
`
`6 Littman et. al., US 4,558,758, issued December 17, 1985 (Ex. 1007,
`“Littman”).
`7 Widdrington, US 3,252,349, issued May 24, 1966 (Ex. 1008,
`“Widdrington”).
`
`7
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 7
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`
`
`Pet. 13. This image depicts a plan view of a three-crawler version of the
`CIII paver, with annotations added by Petitioner that identify the crawler
`tracks, jacking column, and swing leg. We reproduce two additional
`annotated images from CIII from the Petition, below.
`
`
`
`8
`
`
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 8
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Pet. 15, 17. The image on the left depicts an annotated image of a crawler
`and lower portion of a jacking column of CIII, and the image on the right
`depicts a “smart steer cylinder” attached to the lower portion of the jacking
`column. Id. at 15–17. “[T]he steering cylinder, when actuated, rotates the
`guide tubes and crawler track in unison relative to the outer cylinder.”
`Pet. 16 (referencing Ex. 1005, 8-105–107, 8-71–72, 5-35, 5-37).
`CIII includes an electronic steering system that includes a sensor,
`feedback potentiometer, servo valve, and control loop. Ex. 1005, 8-105.
`“The feedback pot[entiometer] measures the position of the track and sends
`a continuous signal to the [controller], indicating the track position” and the
`controller compares the steer and feedback potentiometer signals and causes
`the track to rotate to the desired orientation. Id. at 8-106.
`2. Rio
`Rio, titled “Milling Machine,” issued April 28, 2009. Ex. 1006, codes
`(54), (45). Rio is generally directed to machines that treat road surfaces,
`“and more particularly to a road planer or milling machine.” Id. at 1:5–7.
`We reproduce Rio’s Figure 2, as annotated in the Petition, below.
`
`9
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 9
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`
`
`Pet. 25. Figure 2 depicts a longitudinal section of a portion of Rio’s cold
`planer, showing a swing arm, lifting column, and ground engaging unit.
`Ex. 1006, 3:28–30, 3:62–64, 4:51–53, 6:12–15. Annotations identify ground
`engaging unit 20, support device 40, actuator 44, lifting column 46, inner
`tubular member 58, outer tubular member 60, lifting column actuator 62,
`rotation sensor 75, swing arm 76, and pivot pin 80.
`Actuator 42 (not depicted above) connects to support device 40 and
`pivots swing arm 76 relative to frame 12. Ex. 1006, 4:40–44; see id., Fig. 3
`(depicting actuator 42). Actuator 44 rotates ground engaging unit 20 to
`maintain it in the proper orientation in response to swing arm 76 pivoting.
`Id. at 4:44–47. Controller 32 controls the movement of actuators 42, 44. Id.
`at 4:47–50. Support device 40 includes lifting column 46, which is
`associated with ground engaging unit 20. Id. at 4:51–53. Actuator 44 is
`
`10
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 10
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`connected to lifting column 46 and causes at least a portion of the lifting
`column 46 to rotate about axis 48 to change the orientation of ground
`engaging unit 20. Id. at 4:56–59.
`Preferably, at least one of actuators 42, 44 is a rotary actuator, such as
`“a double helix sliding spline design to produce high torque rotary motion in
`a compact device.” Ex. 1006, 4:61–5:1. “[O]ther rotary actuators such as
`worm or sun gear designs . . . may also be employed with good result. Such
`use of a rotary actuator provides a compact apparatus to achieve rotary
`motion without the need for complicated and bulky linkages, and . . .
`provide[s] fine rotary steering control.” Id. at 5:1–7. Rio discloses that
`“actuator 44 [may be] positioned on the lifting column 46 at a location
`spaced apart from . . . actuator 42 along . . . axis 48,” and, “[p]referably, . . .
`is located at an upper portion 50 of the lifting column 46.” Id. at 5:8–12.
`Controller 32 receives ground engaging unit pivot position signal 122
`and ground engaging unit rotational position signal 124. Ex. 1006, 6:65–
`7:13. Pivot sensor 83 generates signal 122 to indicate the instantaneous
`angular position of swing arm 76 relative to frame 12. Id. at 7:19–23.
`Rotation sensor 75 generates signal 124 to indicate the instantaneous
`rotation angle of the ground engaging unit 20. Id. at 7:23–27. Controller 32
`sends control signals actuators 42, 44. Id. at 7:28–30.
`In operation, for example, controller 32 actuates actuator 42 to move
`swing arm 76. Ex. 1006, 8:18–32. “[P]ivot sensor 83 tracks this motion and
`sends responsive pivot position signals 122 to . . . controller 32,” which
`“responsively actuates . . . actuator 44 to counter-rotate . . . ground engaging
`unit 20 to maintain it in the same running direction as [swing arm 76] moves
`toward the retracted position.” Id. at 8:32–37.
`
`11
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 11
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`3. Smolders
`Smolders, titled “Slip-Form Paver,” issued November 19, 2002.
`Ex. 1010, codes (54), (45). Smolders is generally directed “to a slip-form
`paver and a truck assembly for a construction machine.” Id. at 1:3–4. We
`reproduce an annotated version of Smolder’s Figure 1, from the Petition,
`below.
`
`
`Pet. 77. Figure 1 depicts “a plan view of [Smolder’s] slip-form paver,” with
`annotations, in red, showing hinged brackets. Ex. 1010, 3:32. Relevant to
`this proceeding, Smolder’s slip-form paver includes a hinged bracket on
`multiple swing legs. Id., Fig. 1.
`4. Littman
`Littman, titled “Prime Mover,” issued December 17, 1985. Ex. 1007,
`codes (54), (45). Littman is generally directed “to a prime mover having a
`plurality of elongated, segmented legs with individual steerable drive means
`on each so as to enable the prime mover to be easily moved to and
`
`12
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 12
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`positioned properly in a wide variety of environments and terrains.” Id. at
`1:6–10. We reproduce Littman’s Figures 1, 2, and 4, below.
`
`
`
`
`
`13
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 13
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`
`
`
`
`Figure 1 depicts “a perspective view of a prime mover illustrated in
`use on hilly or uneven terrain, with each of the legs at least partially
`extended,” and Figure 2 depicts “an enlarged view illustrating . . . [an]
`elongated leg.” Ex. 1007, 2:18–22. Figure 4 depicts “a side view of the
`prime mover illustrating one leg in the fully retracted position.” Id. at
`2:25–26.
`Prime mover 10 includes four elongated legs 12, 14, 16 and 18
`connected to central body 20. Ex. 1007, 2:64–3:3. Legs 12, 14, 16 and 18
`have multiple sections that pivot relative to one another. Id. at 3:31–32.
`Leg 18 (Figures 2, 4) includes first section 44 pivoted about pivot means 46
`for moving sideways of central body 20 using actuating means 60. Id. at
`3:33–43.
`
`14
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 14
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Second section 70 includes outer box-like member 72 and telescoping
`box-like member 74. Ex. 1007, 3:56–58. Section 82 is pivotally connected
`to member 74, with actuating means 84 pivoting section 82 relative to
`second section 70. Id. at 4:3–8. Drive means 88, connected to section 82,
`includes wheel means 90, which may be a single wheel, dual wheels, or
`tracks. Id. at 4:13–21.
`We reproduce an annotated version of Littman’s Figure 5, from the
`Petition, below.
`
`
`
`Pet. 87. Figure 5 depicts “a cross-sectional detail view of a drive
`means taken generally along the line 5-5 of” Figure 2. Ex. 1007, 2:28–29.
`Wheel means 90 may be rotated about a horizontal axis, through axle shaft
`120, and a vertical axis through king pin or shaft 124, with rotation about the
`vertical axis caused by actuator 122. Id. at 4:27–32, 5:14–42.
`
`15
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 15
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`In the four-wheel parallel steering mode of operation, the
`steering command comes from the synchro transmitter 175
`which is operatively connected to the steering wheel or steering
`command 176. The signal is directed to the four synchro
`differential transformers 95a, 95b, 95 and 95c, which are located
`at the pivot points of the stabilizing legs 12, 14, 16 and 18,
`respectively, and then to the four synchro control transformers
`130a, 130b, 130 and 130c, which are located at the wheels. The
`synchro differential transformers 95a, 95b, 95 and 95c add or
`subtract the leg position angle from the steering command angle
`to provide a signal to the wheel synchro control transformers
`130a, 130b, 130 and 130c, which is independent of the position
`of the stabilizing legs. When the wheels 90 are driven to the
`correct position by the hydraulic rotary actuators 122a, 122b, 122
`and 122c, the output of the rotor of the synchro control
`transformers 130a, 130b, 130, and 130c is brought to the null,
`that is no output, and the positioning servos are commanded to
`stop.
`Ex. 1007, 8:42–61; see also id. at Figs 13–15 (depicting the control system).
`5. Widdrington
`Widdrington, titled “Gear Drive Mechanism,” issued May 24, 1966.
`Ex. 1008, 1. Widdrington discloses a worm gear mechanism. Id. at 1:9–12,
`6:1–5. We reproduce an annotated version of Widdrington’s Figure 10,
`from the Petition, below.
`
`
`
`16
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 16
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Pet. 106. Figure 10 depicts a schematic of an “externally toothed gear.”
`Ex. 1008, 5:72–73. Annotations identify worm gear 68, in violet, and worm
`shaft members 69, in green. Relevant to this proceeding, Widdrington
`discloses that the depicted gear “is in the nature of a worm gear 68 engaged
`by a plurality of worm shaft members 69 equipped with a torque balancing
`hydraulic pressure system.” Id. at 6:1–4.
`
`
`II. DISCRETIONARY DENIAL
`Patent Owner contends that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny the Petition, applying our precedential decisions
`in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
`Bionics”) and Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first paragraph) (“Becton, Dickinson”). Prelim. Resp. 73–77.8 Specifically,
`Patent Owner argues that “CIII, the primary reference asserted in each
`ground, is substantially the same art as made of record by the examiner
`during prosecution of U.S. Patent Appl. 15,873,757, which matured into the
`’749 [p]atent[,] [a]nd Petitioner fails to demonstrate that the examiner
`materially erred.” Id. at 74.
`For the reasons provided below, we do not exercise our discretion to
`deny institution under § 325(d).
`
`
`8 Petitioner addresses discretionary denial under both 35 U.S.C. § 325(d) and
`§ 314(a), the latter based on a parallel district court proceeding. Pet. 6–11.
`Patent Owner does not argue for discretionary denial under § 314(a), and we
`do not address our discretion under § 314(a) here.
`
`17
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 17
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`1. Applicable Framework
`Section 325(d) provides that, in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
`The Board uses a two-part framework in determining whether to exercise its
`discretion under § 325(d), specifically:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`Advanced Bionics at 8.
`In applying the two-part framework, we consider several non-
`exclusive factors from Becton, Dickinson, which provide “useful insight into
`how to apply the framework” (Advanced Bionics at 9): (a) the similarities
`and material differences between the asserted art and the prior art involved
`during examination; (b) the cumulative nature of the asserted art and the
`prior art evaluated during examination; (c) the extent to which the asserted
`art was evaluated during examination, including whether the prior art was
`the basis for rejection; (d) the extent of the overlap between the arguments
`made during examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner
`has pointed out sufficiently how the examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art or
`arguments. Becton, Dickinson at 17–18. If, after review of factors (a), (b),
`
`18
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 18
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`and (d), we determine that the same or substantially the same art or
`arguments previously were presented to the Office, we then review factors
`(c), (e), and (f), which relate to whether the petitioner demonstrates that the
`Office erred in a manner material to the patentability of the challenged
`claims. Advanced Bionics at 10.
`2. Analysis
`a) Part One of the Advanced Bionics framework
`Under the first part of the Advanced Bionics two-part framework, we
`determine “whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office.” Advanced Bionics at 8.
`We look to Becton, Dickinson factors (a), (b), and (d) to inform our analysis.
`Advanced Bionics at 9–10.
`(1) Becton, Dickinson Factors (a) and (b)
`Factor (a) under the Becton, Dickinson construct looks at “the
`similarities and material differences between the asserted art and the prior art
`involved during examination.” Advanced Bionics at 9 n.10. Factor (b)
`under the Becton, Dickinson construct looks at “the cumulative nature of the
`asserted art and the prior art evaluated during examination.” Id. Patent
`Owner contends that U.S. Patent Numbers 9,541,195 and 9,464,716, each
`assigned to Petitioner, “were made of record by the examiner during
`prosecution” of the application that matured into the ’749 patent. Prelim.
`Resp. 74–75. Patent Owner adds that the CIII machine is marked with these
`patent numbers. Id. at 75 (referencing Ex. 2008). Patent Owner concludes
`that “CIII is substantially similar to, and cumulative of, the technology
`disclosed in” these two patents. Id. at 76.
`
`19
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 19
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Petitioner replies that Patent Owner ignores that the Petition does not
`rely on CIII alone but, instead, “heavily relies on Rio, and Rio teaches the
`very concepts that the ’749 patent states are novel in its claims.” Prelim.
`Reply 5. Petitioner adds that Patent Owner does not dispute “that neither
`Rio nor any reference like it was considered during prosecution” of the
`application that matured into the’749 patent. Id.
`Patent Owner replies that CIII is substantially similar to the prior art
`considered by the examiner and that “the addition of Rio does not warrant
`reconsideration of CIII because Rio does not bridge the sufficiently wide gap
`between CIII and the claimed invention.” Prelim. Sur-reply 5.
`We agree with Petitioner that factors (a) and (b) weigh against
`discretionary denial. Three of the six grounds of the Petition rely on Rio for
`its rotary actuator and sensor and feedback system, elements recited in each
`of the independent claims. Similarly, the other three grounds rely on
`Littman for its rotary actuator and sensor and feedback system. Patent
`Owner does not direct us to nor do we discern prior art of record during the
`prosecution of the application that matured into the ’749 patent that is
`substantially the same as, or cumulative of Littman’s or Rio’s disclosure of,
`these features.
`Accordingly, we determine that there are material differences between
`the prior art considered during prosecution and the prior art on which the
`Petition relies.
`(2) Becton, Dickinson Factor (d)
`Factor (d) under the Becton, Dickinson construct looks at “the extent
`of the overlap between the arguments made during examination and the
`manner in which Petitioner relies on the prior art” or Patent Owner
`distinguishes the prior art. Advanced Bionics at 9 n.10.
`
`20
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 20
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Patent Owner does not direct us to any overlap of arguments made
`during examination and the manner in which Petitioner relies on the prior art
`or Patent Owner distinguishes the prior art.
`b) Part Two of the Advanced Bionics framework
`Because we determine, in our analysis of part one, that the same or
`substantially the same art or arguments were not previously presented to the
`Office, we need not address part two of the analysis.
`c) Conclusion
`Based on our analysis of the Becton, Dickinson factors within the
`Advanced Bionics framework, we determine that discretionary denial under
`§ 325(d) is not appropriate under the facts before us.
`
`
`III. UNPATENTABILITY
`
`A. Applicable Law
`Petitioner’s asserted grounds of unpatentability are based on
`obviousness under 35 U.S.C. § 103.
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when available, objective evidence, such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`21
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 21
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”).
`Notwithstanding what the teachings of the prior art would have
`suggested to one with ordinary skill in the art at the time of the patent’s
`invention, the totality of the evidence submitted, including objective
`evidence of nonobviousness, may lead to a conclusion that the challenged
`claims would not have been obvious to one with ordinary skill in the art. In
`re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence
`of nonobviousness, so called “secondary considerations,” may include long-
`felt but unsolved need, failure of others, unexpected results, commercial
`success, copying, licensing, and praise. See Graham, 383 U.S. at 17–18;
`Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
`2007).
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having
`ordinary skill in the art “would have had at least a four-year degree in
`mechanical engineering or a closely related field and at least two years of
`experience designing, developing, or operating heavy machinery, including
`their components and control systems.” Pet. 11 (referencing Ex. 1002 ¶ 22).
`
`22
`
`Patent Owner, Guntert & Zimmerman - Ex. 2009, p. 22
`
`

`

`IPR2020-01698
`Patent 10,029,749 B2
`Petitioner also contends that “[a]dditional education could substitute for
`professional experience and significant work experience—such as working
`with, servicing, or operating heavy machinery in the field—could substitute
`for formal education.” Id.
`Patent Owner does not address the level of ordinary skill in the art
`expressly in the Preliminary Response.
`For the purposes of this Decision, we apply Petitioner’s definition of
`the level of ordinary skill in the art. We determine that this definition is
`consistent with the prior art of record and the skill reflected in the
`Specification of the ’749 patent, based on our review of the limited record.
`C. Claim Construction
`In inter partes reviews, we interpret a claim “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this
`standard, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`Petitioner contends that we need not resolve any claim construction
`di