Godbersen Smith Construction Co v. Guntert & Zimmerman Const Div Inc

1. Case Identification

• Case #: IPR2021-00050
• Patent #: 9,708,020
• Filed: October 14, 2020
• Petitioner(s): Godbersen-Smith Construction Company d/b/a GOMACO Corporation
• Patent Owner(s): Guntert & Zimmerman Const. Div., Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Slipform Paver
• Brief Description: The ’020 patent discloses a slipform paver for laying concrete, featuring a center module, bolsters, swing legs, and crawler tracks. The purported invention is a sensor-based control system that coordinates the rotation of the crawler tracks with the pivoting of the swing legs to maintain track orientation.

3. Grounds for Unpatentability

Ground 1: Anticipation over Swisher - Claims 1 and 7 are anticipated by Swisher.

• Prior Art Relied Upon: Swisher (Patent 3,970,405).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Swisher, a prior art slipform paving machine, discloses every element of independent claim 1. Swisher teaches a center module (frame section 25), forward and aft bolsters (cross members 46, 50), crawler tracks (track assemblies 16), swing legs (leg members 74), upright jacking columns (vertical cylinder member 76), and a power drive unit (hydraulic ram 120) that rotates the crawler tracks. For dependent claim 7, Petitioner asserted Swisher’s leg jacks function as the claimed "holder" capable of being held at a fixed length to prevent motion of the swing leg.

Ground 2: Obviousness over Swisher and Rio - Claims 1 and 7 are obvious over Swisher in view of Rio.

• Prior Art Relied Upon: Swisher (Patent 3,970,405) and Rio (Patent 7,523,995).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Swisher provides the basic structure of a slipform paver as claimed. Rio, which was not considered during prosecution, discloses a swing-leg assembly with rotary actuators and a sensor-based control system that solves the same problems addressed by the ’020 patent. Rio teaches using a pivot sensor on the swing arm and a rotation sensor on the track to provide feedback to a controller, which then counter-rotates the track to keep it parallel to the machine frame as the swing leg pivots.
  • Motivation to Combine: A POSITA would combine Rio’s automated control system with Swisher’s paver to overcome the known disadvantages of Swisher’s system. Swisher’s hydraulic ram required manual repositioning and offered a limited range of motion. A POSITA would have replaced this with Rio’s compact rotary actuator to gain greater maneuverability, faster adjustments, and improved operator safety by eliminating manual intervention.
  • Expectation of Success: The combination involved substituting one known actuator and control system for another to achieve the predictable result of automated, coordinated steering. Both references are from the same field of road-construction machinery, and Rio explicitly teaches the advantages of its automated system for controlling swing legs and crawler tracks.

Ground 3: Obviousness over Swisher, Rio, and CIII - Claims 2-3, 5-6, and 12-13 are obvious over Swisher, Rio, and CIII.

• Prior Art Relied Upon: Swisher (Patent 3,970,405), Rio (Patent 7,523,995), and CIII (Commander III New Generation Trimmer/Paver Operator/Service Manual).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Swisher and Rio by adding CIII to teach limitations found in several dependent claims. CIII, a manual for a commercial slipform paver, discloses a modular hinge bracket for its swing leg, which is relevant to claim 3. Rio provides the necessary teachings for the angular position transducers (sensors), processor (controller), feedback, and feedback loop recited in claims 2, 5, and 6. CIII further discloses a hydraulic actuator mounted on its hinge bracket for pivoting the swing leg, as required by claim 12.
  • Motivation to Combine: A POSITA would incorporate CIII’s hinge bracket design into the Swisher/Rio paver for its modularity. Swisher’s design used welded plates, making repair or reconfiguration cumbersome. CIII’s bolted hinge bracket offered an obvious advantage for easier assembly, disassembly, and maintenance. Implementing Rio’s sensor and control system would automate the tedious and time-consuming manual process of keeping the tracks parallel, as required in Swisher.
  • Expectation of Success: All three references pertain to slipform pavers, making them analogous art. Combining CIII’s modular bracket and Rio’s control system with Swisher's paver were straightforward modifications using known components to achieve predictable improvements in serviceability and automation.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Swisher, Rio, and Widdrington (Patent 3,252,349) for claims 4 and 13 (teaching a dual helical worm gear drive) and combinations including Guntert (Patent 6,176,643) and CIII for claims 8-11 (teaching a detachable trailing module and reconfigurable swing legs).

4. Key Claim Construction Positions

• "mechanically coupled" (Claim 1): Petitioner proposed this term be construed to mean "directly or indirectly coupled." Petitioner argued this construction is necessary because in the ’020 patent’s own embodiments, the crawler tracks are not directly attached to the bolsters but are instead indirectly coupled through several intervening components, such as the jacking column and swing leg. This construction is critical for the prior art to map onto the claim language.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was not warranted. Petitioner stated it would seek a stay in the parallel district court case upon institution. While the trial date was scheduled for April 2022, around the same time as the FWD deadline, Petitioner noted that court schedules were subject to delay and that investment in the parallel litigation was minimal. Critically, Petitioner argued that the IPR presented prior art (Rio, CIII, Widdrington, Guntert) that was not before the examiner, and the one cited reference (Swisher) was not substantively applied. Therefore, denial under 35 U.S.C. §325(d) would be inappropriate, and the strong merits of the petition favored institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 of Patent 9,708,020 as unpatentable.