Kubota North America Corp v. Vermeer Mfg Co

1. Case Identification

• Case #: PGR2025-00016
• Patent #: 12,098,063
• Filed: January 7, 2025
• Petitioner(s): Kubota North America Corporation, Kubota Tractor Corporation
• Challenged Claims: 4-14

2. Patent Overview

• Title: Compact Tool Carrier and Mainframes for a Self-Propelled Machine
• Brief Description: The ’063 patent discloses a compact tool carrier for standing or walk-behind operation. The carrier features a loader mounted to a mainframe via a four-bar linkage mechanism and an actuator to control the loader arms.

3. Grounds for Unpatentability

Ground 1: Claims 4, 7-12 are obvious over KR996

• Prior Art Relied Upon: KR996 (Korean Patent No. 10-1041996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that KR996, which discloses an "Environmentally Friendly Construction Equipment," is a compact tool carrier that discloses every limitation of independent claim 4. KR996's vehicle includes a mainframe supporting a loader (unit 40) with a loader arm (boom 44), which is pivotally attached to the mainframe via a first linkage (link 45), a second linkage (a forward link), and an actuator (boom cylinder 46). All three components are also directly and pivotally attached to the loader arm itself. KR996 further discloses a control station (unit 13) at the rear of the carrier with controls for propelling the machine and operating the loader. Petitioner contended that KR996 also renders the dependent claims obvious. Claim 7's "single weldment" mainframe is an obvious fabrication choice. Claims 8 and 9 are met by KR996's symmetrical design, which inherently includes a second loader arm with corresponding linkages and actuator. Claim 10's drive mechanism is disclosed as wheels (14). Claim 11's "hydraulic cylinder" is disclosed as KR996's "boom cylinder," a term used interchangeably with hydraulic cylinder. Claim 12's "single weldment" loader arm is disclosed by KR996's drawings and is an obvious design choice for strength and durability.
  • Motivation to Combine (for §103 grounds): Not applicable for single-reference ground, but Petitioner argued that to the extent KR996 is found not to explicitly disclose certain features like a single weldment, a POSITA would have found it obvious to incorporate such known manufacturing techniques for their predictable benefits of strength, reliability, and ease of fabrication.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as these are standard design choices and manufacturing methods for vehicle frames and loader arms.

Ground 2: Claims 5-6 are obvious over KR996 in view of JP705

• Prior Art Relied Upon: KR996 (Korean Patent No. 10-1041996), JP705 (Japanese Publication No. 2004-17705).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the combination of KR996 and JP705 renders claims 5 and 6 obvious. KR996 discloses a compact tool carrier with a mainframe and an engine but does not detail how the engine is mounted. JP705 addresses the problem of mounting components to a work vehicle frame, disclosing a mainframe with integral mounting parts (7) that extend from the side plates to serve as an engine bracket. Petitioner argued that adding the engine bracket taught by JP705 to the KR996 vehicle meets the limitations of claim 5. Claim 6 is consequently obvious because the purpose of the engine bracket is to attach the engine, which in turn propels the drive mechanism disclosed in KR996.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings to provide a secure and efficient mounting for the engine in KR996's vehicle, which is a known device ready for improvement. JP705 teaches that integrating mounting brackets reduces parts, weight, and cost while providing a strong, designated surface for engine installation. This combination applies a known technique (engine brackets) to a similar device (compact tool carrier) to achieve a predictable result.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as both references relate to earth-moving equipment, and implementing a known engine mounting solution on a vehicle frame is a straightforward engineering task.

Ground 3: Claims 13-14 are obvious over KR996 in view of Bares

• Prior Art Relied Upon: KR996 (Korean Patent No. 10-1041996), Bares (Patent 6,832,659).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the combination of KR996 and Bares renders claims 13 and 14 obvious. KR996 discloses a mainframe and an operator platform (folding safety step 15). Bares, which discloses a small, track-propelled loader, teaches extending the mainframe with side support plates (104, 106) to create a protective "pocket" that partially surrounds the operator platform (170). Petitioner argued that modifying KR996's mainframe to include the protective pocket taught by Bares would satisfy the limitations of claim 13. Claim 14 is consequently met because the operator platform (KR996's step 15) would then be located at least partially within this newly created pocket.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings to improve operator safety on the KR996 vehicle, a well-known concern in the art. Bares's frame extension provides a physical barrier between the operator and potential hazards like the drive mechanism or debris. KR996 itself acknowledges the need for operator protection, making the addition of another known safety feature a logical improvement.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the modification is a simple extension of KR996's existing frame, and both references relate to similar stand-on or walk-behind loaders where operator safety is a key design consideration.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the primary prior art reference, KR996, was not previously presented to or considered by the Examiner during prosecution.
• Petitioner also argued that denial under the Fintiv factors is inappropriate. The co-pending district court litigation is in its very early stages, and the Patent Owner had only recently added the ’063 patent to the complaint. Petitioner contended that the PTAB’s final written decision would likely issue before or contemporaneously with the scheduled district court trial date of May 11, 2026, minimizing any concerns of inefficiency.

5. Relief Requested

• Petitioner requests institution of a post-grant review and cancellation of claims 4-14 of the ’063 patent as unpatentable.