PTAB

IPR2018-01200

Wirtgen America Inc v. Caterpillar Paving Products Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System for Saving and Recalling Paving Machine Screed Settings
  • Brief Description: The ’871 patent discloses a system for automating the setup of a paving machine by saving and recalling multiple sets of configuration parameters for its screed assembly. The invention aims to reduce setup time and operator error by allowing an operator to save settings from one paving operation and recall them for a subsequent one.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 6, 9, 13, 17 over Grembowicz and Panoushek

  • Prior Art Relied Upon: Grembowicz (Patent 5,568,992) and Panoushek (Patent 6,871,483).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Grembowicz, a patent on an asphalt paving machine, disclosed all the physical components of independent claim 1: a screed assembly with adjustable components (e.g., extendable screeds, tow arms), a plurality of actuators (hydraulic cylinders) to adjust them, and a plurality of sensors (position sensors, inclinometers) to sense their configuration. Petitioner contended that Panoushek, which discloses saving and recalling multiple header positions for an agricultural combine, taught the missing functional elements: an operator input device with "save" and "recall" commands and a controller configured to store and retrieve sensed parameters in memory to automatically adjust the machine. Dependent claims were allegedly addressed by Grembowicz’s disclosure of extendable screeds (claim 6) and tow arms (claims 13, 17).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Panoushek's automation concept with Grembowicz's paver to solve the known problems of time-consuming manual setup and operator error in the paving industry. Petitioner asserted that automating the well-known process of configuring a screed assembly was a predictable solution to increase efficiency, reduce labor costs, and improve safety.
    • Expectation of Success: A POSITA would have had a high expectation of success because Grembowicz already included the necessary controller, memory, sensors, and actuators. The required modification was merely programming the existing controller to implement the known save/recall functionality taught by Panoushek, which was a well-understood software implementation.

Ground 2: Obviousness of Claims 2, 3, 14 over Grembowicz, Panoushek, and Buschmann

  • Prior Art Relied Upon: Grembowicz (Patent 5,568,992), Panoushek (Patent 6,871,483), and Buschmann (Application # 2012/0010787).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Grembowicz and Panoushek to address claims requiring the monitoring and saving of "operation parameters" (e.g., tamper speed) in addition to "configuration parameters." Petitioner argued that while Grembowicz and Panoushek taught saving component positions, Buschmann explicitly taught saving process-relevant operational parameters like tamper or vibration speed for a road finishing machine. According to Petitioner, Buschmann disclosed that saving these parameters was critical for achieving consistent paving quality.
    • Motivation to Combine: A POSITA, seeking to fully automate the paver setup as motivated by Panoushek, would look to other paving-related art like Buschmann to understand which parameters beyond physical configuration were important to save. Buschmann provided the express teaching and motivation to include operational parameters to improve laying quality and produce a uniform work result, which were known goals in the art.
    • Expectation of Success: The combination was presented as a predictable aggregation of known elements. Adding the saving of operational parameters (taught by Buschmann) to the system for saving configuration parameters (taught by Grembowicz and Panoushek) would have been a straightforward extension of the core save/recall functionality.

Ground 3: Obviousness of Claims 8, 12 over Grembowicz, Panoushek, and Davin

  • Prior Art Relied Upon: Grembowicz (Patent 5,568,992), Panoushek (Patent 6,871,483), and Davin (Patent 3,602,113).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims requiring a screed assembly that is pivotable about a centerline to provide an adjustable "crown position." Petitioner asserted that while Grembowicz disclosed a main screed with two sections, it was silent on crowning. Davin was introduced because it explicitly taught a screed with two plates articulated at a midpoint, a crown-adjusting actuator, and a crowning sensor to create and control an adjustable crown profile, a common requirement for road construction.
    • Motivation to Combine: A POSITA would have recognized the need to control the crown of the paved mat. When implementing the automated setup of Grembowicz/Panoushek, the POSITA would have incorporated the well-known crown adjustment mechanism from Davin to automate another critical, known setup parameter, thereby increasing the efficiency of the paving operation.
    • Expectation of Success: Petitioner argued that combining Davin's conventional crowning mechanism with the Grembowicz paver was a straightforward integration of a known feature into a larger system, yielding predictable results.

  • Additional Grounds: Petitioner asserted further obviousness challenges, including: claims 4, 15, and 16 over Grembowicz, Panoushek, Buschmann, and Emerson (adding a tamping bar mechanism); and claim 5 over Grembowicz, Panoushek, and Lossow (adding specific tow arm actuators and sensors).

4. Key Claim Construction Positions

  • “screed assembly having a plurality of adjustable components”: Petitioner argued this term, particularly its inclusion of "tow arms," is indefinite because a POSITA would not consider tow arms part of the screed assembly. For the purposes of the IPR, however, Petitioner assumed the term was definite and argued that even under this construction, the claims were obvious.
  • “a first paving operation”: Petitioner contended this should be construed as "paving for a given job site or a given mat pull," tying the saved settings to discrete, real-world paving tasks.

5. Key Technical Contentions (Beyond Claim Construction)

  • Analogous Art of Panoushek: A core contention was that Panoushek, which relates to an agricultural harvester, is analogous art to the ’871 patent’s paving machine. Petitioner argued Panoushek was pertinent because it addressed the same problems of reducing machine setup time and operator error through automation. Petitioner also cited previous arguments by Patent Owner Caterpillar in a European Opposition where Caterpillar itself had argued that controls for agricultural harvesters are analogous to controls for pavers.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6, 8, 9, and 12-17 of the ’871 patent as unpatentable under 35 U.S.C. §103.