PTAB

IPR2021-00234

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

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Slipform Paver with Coordinated Crawler-Track and Swing-Leg Movement
  • Brief Description: The 10,196,101 patent discloses a slipform paver for laying concrete. The purported invention is a sensor-based control system that automatically coordinates the rotational movement of the machine's crawler tracks with the pivoting movement of its swing legs to maintain a desired track orientation.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 8-14 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 argued that Swisher disclosed the foundational mechanical structure of a slipform paver, including a module frame, multiple pivotable swing leg assemblies, upright jacking columns, and crawler tracks. However, Swisher's system required manual effort to reposition the swing legs and steer the tracks. Petitioner asserted that Rio, which relates to a road-milling machine, taught the missing element: an automated, sensor-based control system. Rio disclosed using angular position sensors on both a swing arm and a track, a processor that receives signals from these sensors, and actuators that automatically counter-rotate the track to maintain its orientation as the swing arm pivots. The combination of Swisher's paver and Rio's control system allegedly met the limitations of independent claim 1.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Swisher and Rio to solve the well-known problem of the difficult and inefficient manual repositioning of paver swing legs and tracks. Rio's automation directly addressed this problem, and a POSITA would have been motivated to replace Swisher's manual controls with Rio’s automated system to achieve greater maneuverability, faster adjustments, and safer operation.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because both references are in the analogous art of road-construction machinery, and the combination involved applying a known control system to a conventional mechanical platform to achieve the predictable result of automated positioning.

Ground 2: Claim 3 is obvious over Swisher, Rio, and Widdrington

  • Prior Art Relied Upon: Swisher (Patent 3,970,405), Rio (Patent 7,523,995), and Widdrington (Patent 3,252,349).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Swisher/Rio combination to specifically address claim 3, which added the limitation of a power drive comprising "first and second diametrically opposed helical worm drives engaging and driving a ring gear." Petitioner contended that Widdrington disclosed this exact gear drive mechanism for providing rotary motion.
    • Motivation to Combine (for §103 grounds): A POSITA implementing the rotary actuator taught by Rio would have sought a compact, robust, and reliable design. Widdrington taught that using a dual worm-gear drive provides balanced torque, reducing wear and maintenance. Therefore, a POSITA would combine Widdrington's known drive mechanism with the Swisher/Rio paver as a known and advantageous design choice for the rotary actuator.

Ground 3: Claims 14-19 are obvious over Swisher, Rio, and Berger

  • Prior Art Relied Upon: Swisher (Patent 3,970,405), Rio (Patent 7,523,995), and Berger (Patent 7,140,830).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Berger to the Swisher/Rio combination to address claims 14-19, which relate to using stored preset position data within a feedback loop. Berger disclosed an electronic control system for construction machinery featuring a "return-to-dig" mode, where an operator can store the specific angular positions of a boom and bucket (using sensor signals) and later command the machine to automatically return to that memorized configuration. This functionality allegedly taught the claimed limitations of a processor having stored values for preset angles and generating control signals by calculating the difference between current sensor signals and the stored values.
    • Motivation to Combine (for §103 grounds): While Swisher disclosed that its swing legs could assume various positions, the automation from Rio only addressed movement between two predefined endpoints. A POSITA would be motivated to incorporate Berger's memorization-and-recall feature to provide operators the flexibility to save and automatically return to any number of custom, user-defined swing leg and track orientations. This would further enhance the efficiency and automation of the Swisher/Rio paver.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4-7 based on the combination of Swisher, Rio, Widdrington, and Berger, relying on similar rationales.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was not warranted. Petitioner asserted that it would seek a stay in the parallel district court litigation, which would favor institution. While the trial date was scheduled near the statutory deadline for a Final Written Decision, Petitioner argued that likely court delays and the minimal investment in the district court case to date weighed in favor of institution. Petitioner further contended that the merits of the petition were strong and that the primary prior art references (Rio, Widdrington, Berger) were not considered during prosecution, also weighing against denial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 10,196,101 as unpatentable.