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Filed on behalf of: Caterpillar Inc. By: Anthony M. Gutowski Daniel C. Cooley Alyssa J. Holtslander FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP Telephone: 202-408-4000
Facsimile: 202-408-4400 E-mail: [email protected] [email protected] [email protected]
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________________
CATERPILLAR INC.,
Petitioner
v.
ESCO CORPORATION, Patent Owner
______________________
IPR2015-01032 U.S. Patent No. 8,689,472
______________________
PETITION FOR INTER PARTES REVIEW
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
i
TABLE OF CONTENTS
I. Introduction ................................................................................................................. 1
II. This Petition Should Be Instituted Along with the Prior Petition Because the Grounds Proposed Are Not Substantially the Same ....................................... 2
III. Mandatory Notices ..................................................................................................... 6
Real Party-in-Interest: ................................................................................................. 6
Related Matters: ........................................................................................................... 6
IV. Payment of Fees .......................................................................................................... 7
V. Grounds for Standing ................................................................................................. 7
A. At Least One Challenged Claim Is Unpatentable ....................................... 7
VI. Statement of Precise Relief Requested for Each Claim Challenged ..................... 8
VII. Background of the Technology ................................................................................. 9
A. The ’472 Patent ................................................................................................ 9
B. Scope and Content of the Prior Art ............................................................ 11
VIII. Claim Construction ................................................................................................... 17
A. One of Ordinary Skill in the Art.................................................................. 18
B. Claim Terms ................................................................................................... 18
IX. Claims 1-20 of the ’472 Patent Are Unpatentable ................................................ 21
A. Claims 1-20 Are Obvious in View of Gale and Peterson, and Claims 14-20 Are Anticipated by Gale ........................................................ 21
X. Conclusion ................................................................................................................. 59
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
ii
TABLE OF AUTHORITIES
Page(s)
Federal Cases
Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628, Paper 21 (P.T.A.B. Oct. 20, 2014) ..................................................... 4
Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628, Paper 23 (P.T.A.B. Mar. 20, 2015) .................................................... 4
In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015) ..................................................................................... 17
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) ................................................... 5
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ........................................................................................................ 55
Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013-00009, Paper 10 (P.T.A.B. Mar. 28, 2013) .................................................. 4
Ex parte Masham, 2 U.S.P.Q.2d 1647 (B.P.A.I. 1987) ............................................................................... 20
Medtronic, Inc. v. Norred, IPR2014-00110, Paper 1 (P.T.A.B. Oct. 31, 2013) ....................................................... 3
Medtronic, Inc. v. Norred, IPR2014-00111, Paper 1 (P.T.A.B. Oct. 31, 2013) ....................................................... 3
Medtronic, Inc. v. Norred, IPR2014-00395, Paper 4 (P.T.A.B. Jan. 31, 2014) ........................................................ 4
Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014) ...................................................... 5
Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014) .................................................... 5
Prism Pharma Co. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 (P.T.A.B. July 8, 2014) ........................................................ 5
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
iii
In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ..................................................................................... 17
Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) ........................................................ 5
United Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014) ...................................................... 5
In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) ..................................................................................... 17
ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (P.T.A.B. Sept. 25, 2013) .................................................... 5
Federal Statutes
35 U.S.C. § 102........................................................................................................................ 8
35 U.S.C. § 102(b) ......................................................................................................... 8, 9, 21
35 U.S.C. § 103........................................................................................................................ 8
35 U.S.C. § 103(a) ............................................................................................................. 8, 21
35 U.S.C. § 314(a) ................................................................................................................... 8
35 U.S.C. § 315(e) ............................................................................................................... 3, 6
35 U.S.C. § 325(d) ................................................................................................................... 4
Federal Regulations
37 C.F.R. § 42.15(a) ................................................................................................................ 7
37 C.F.R. § 42.103(a) .............................................................................................................. 7
37 C.F.R. § 42.104(a) .......................................................................................................... 3, 7
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ............................................................................................................ 6, 17
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
iv
LIST OF EXHIBITS
Exhibit 1001. U.S. Patent No. 8,689,472 to Carpenter et al., issued April 8, 2014 (“the ’472 patent”)
Exhibit 1002. Declaration of Lee A. Horton, P.E., with C.V.
Exhibit 1003. U.S. Patent No. 6,085,448 to Gale et al., issued July 11, 2000 (“Gale”)
Exhibit 1004. U.S. Patent No. 4,505,058 to Peterson, issued March 19, 1985 (“Peterson”)
Exhibit 1005. U.S. Patent Application Publication No. 2002/0000053 to Adamic et al., published January 3, 2002 (“Adamic”)
Exhibit 1006. U.S. Patent No. 6,079,132 to Clendenning, issued June 27, 2000 (“Clendenning”)
Exhibit 1007. U.S. Patent No. 7,367,144 to Jones et al., issued May 6, 2008 (“Jones”)
Exhibit 1008. Docket Report in District of Nevada Case No. 2:14-cv-00529
Exhibit 1009. Reserved
Exhibit 1010. Reserved
Exhibit 1011. Defendants’ Preliminary Identification of Proposed Claim Constructions and Supporting Intrinsic and Extrinsic Evidence from District of Nevada Case No. 2:14-cv-00529
Exhibit 1012. ESCO’s LR 16.1-14 Preliminary Proposed Claim Constructions and Identification of Supporting Intrinsic and Extrinsic Evidence from District of Nevada Case No. 2:14-cv-00529
Exhibit 1013. Defendants’ Opening Claim Construction Brief from District of Nevada Case No. 2:12-cv-01545
Exhibit 1014. IPR2015-00409, “Petition for Inter Partes Review,” Paper 2, filed December 19, 2014
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
1
I. Introduction
U.S. Patent No. 8,689,472 (“the ’472 patent”) (Ex. 1001) purports to concern
an “invention” relating to wear parts and locks that hold wear parts to excavation
equipment. The foundation for the ’472 patent’s alleged invention is that a lock is
secured to a wear part. But the notion of securing a lock to its respective wear part
was known by people of ordinary skill in the art over a decade prior to the ’472
patent. Indeed, U.S. Patent No. 6,085,448 to Gale et al. (“Gale”), U.S. Patent No.
4,505,058 to Peterson (“Peterson”), and U.S. Patent Application Publication No.
2002/0000053 to Adamic et al. (“Adamic”) disclose this concept.
The ’472 patent dresses up its “invention” in different garbs—using functional
and intended-use language referring to the lock being secured in multiple positions or
being secured irrespective of whether a wear member is installed on its base—but
Gale, Peterson, and Adamic teach these features. Gale, Peterson, and Adamic disclose and
suggest all of the other nuances recited in the ’472 patent claims, including latch
formations, resilient members, and bearing faces. Because the ’472 patent merely
claims features that—even in combination—were known, obvious, or both, the
claims of the ’472 patent are not patentable and cannot stand. Therefore, Caterpillar
requests that the Board institute trial and cancel each of the claims of the ’472 patent.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
2
II. This Petition Should Be Instituted Along with the Prior Petition Because the Grounds Proposed Are Not Substantially the Same
Caterpillar previously filed a petition for inter partes review (“IPR”) of the ’472
patent, which is awaiting an institution decision. IPR2015-00409 (“the ’409 petition”)
(Ex. 1014). Notwithstanding the prior petition, the facts and the law confirm that the
Board should review the present petition on the merits and institute it.
First, the grounds in the present petition are distinct from the grounds
presented in the ’409 petition. Not a single prior art document discussed in the ’409
petition is applied in the present petition. Furthermore, the examiner of the ’472
patent never applied any of the art in the present petition. Certainly the positions and
references in both petitions lead to the same conclusion—that the claims of the ’472
patent are unpatentable and should be canceled—but they arrive there using different
prior art structures and teachings. The following annotated drawings, which show a
respective lock from each petition’s primary reference, succinctly illustrate this point:
Left: Fig. 3 of Gale used in instant petition; Right: Fig. 18 of Emrich used in the ’409 petition
Lock Lock
Resilient member Resilient member
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
3
In addition to the substantive dissimilarity in the positions and the prior art
addressed in both petitions, the present petition is being filed timely according to the
applicable statutes. The present petition is not barred under 35 U.S.C. § 315(e)(2)—
the Patent Owner served Petitioner with a complaint less than one year ago, in late
June 2014, see Ex. 1008 at 9—and the Petitioner is not estopped under 35 U.S.C.
§ 315(e)(1) since the ’409 petition has not resulted in a final written decision. Indeed,
the present petition is being filed prior to an institution decision in the ’409 petition.
Requesting the Board’s merits review of the instant petition is also reasonable
from a burden standpoint since Petitioner has presented only two proposed grounds
in this petition, and the grounds rely on the same base reference, Gale. Likewise, the
three grounds in the ’409 petition rely on a single base reference, Emrich. See Ex. 1014.
The present petition for review of the ’472 patent is appropriate in light of the
legal framework for IPR and the Board’s prior decisions. Petitioner has complied with
every statute and regulation for filing an IPR, including all of the requirements
outlined in 37 C.F.R. § 42.104(a). Moreover, the relevant facts applicable to
Caterpillar’s filing of this second IPR are similar to facts in cases where the Board has
instituted IPRs on multiple petitions. For example, Medtronic, Inc., Medtronic
Vascular, Inc., and Medtronic Corevalve, LLC (collectively, “Medtronic”) filed two
IPR petitions in IPR2014-00110 and IPR2014-00111, both filed on October 31, 2013,
challenging claims 16-24. See Medtronic, Inc. v. Norred, IPR2014-00110, Paper 1
(P.T.A.B. Oct. 31, 2013); Medtronic, Inc. v. Norred, IPR2014-00111, Paper 1 (P.T.A.B.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
4
Oct. 31, 2013). Medtronic then filed a third petition (IPR2014-00395) on January 31,
2014, again challenging claims 16 and 19-24. See Medtronic, Inc. v. Norred, IPR2014-
00395, Paper 4 (P.T.A.B. Jan. 31, 2014). Like this case, Medtronic filed its third
petition prior to receiving an institution decision in the first and second petitions. The
Board instituted review on six total proposed grounds of rejection, including grounds
proposed in the third petition. The present case is similar to IPR2014-00395 and
other cases where multiple proceedings have been instituted after more than one
petition was filed for the same patent, see also, e.g., Liberty Mut. Ins. Co. v. Progressive Cas.
Ins. Co., CBM2013-00009, Paper 10 (P.T.A.B. Mar. 28, 2013).
Merits review and institution of the present petition is also appropriate because
the facts in this case differ from cases where the Board has denied a second petition
as duplicative. For example, in contrast to cases like IPR2014-00628, where the Board
denied a second petition that included nine proposed grounds of rejection with
“substantially the same . . . arguments,” see Conopco, Inc. v. Procter & Gamble Co.,
IPR2014-00628, Paper 21 at 6 (P.T.A.B. Oct. 20, 2014) (quoting 35 U.S.C. § 325(d)),
Caterpillar has proposed only two grounds in the present petition and three grounds in
the ’409 petition, and the grounds in both petitions differ in the prior art applied and
the arguments presented. Moreover, unlike IPR2014-00628, Caterpillar is not trying to
use the Board’s analysis “as a roadmap, until a ground is advanced that results in
review.” See Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628, Paper 23 at 5
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
5
(P.T.A.B. Mar. 20, 2015). Caterpillar is filing the present petition before an institution
decision in its first petition. IPR2014-00628 is nothing like this case.
Caterpillar is not aware of any case where the Board refused to institute a
second petition as duplicative, based on facts like those of the present case. To
Petitioner’s knowledge, cases that deny a second petition as duplicative involve one or
more of the following factors: (1) the second petition used similar arguments or art,
(2) the second petition was filed post-institution or after the one-year time bar, and/or
(3) the second petition used prior art applied by the examiner. See ZTE Corp. v.
ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (P.T.A.B. Sept. 25, 2013);
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (P.T.A.B.
Nov. 21, 2013); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, Paper
17 (P.T.A.B. June 19, 2014); Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506,
Paper 17 (P.T.A.B. July 7, 2014); Prism Pharma Co. v. Choongwae Pharma Corp., IPR2014-
00315, Paper 14 (P.T.A.B. July 8, 2014); United Patents, Inc. v. PersonalWeb Techs., LLC,
IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014); Medtronic, Inc. v. Nuvasive, Inc.,
IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014). None of those factors exists in this
case, and any other factors are greatly outweighed by the considerations above
favoring institution. Accordingly, the present petition’s grounds are non-duplicative of
those presented in the ’409 petition, and separate consideration is warranted.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
6
III. Mandatory Notices
Real Party-in-Interest: Caterpillar Inc. is the sole real party-in-interest for this
petition. Other entities are named as parties in a copending district court litigation
with ESCO (see infra Related Matters), namely, Cashman Equipment Company,
Caterpillar Global Mining LLC, Raptor Mining Products (USA) Inc., and Raptor
Mining Products Inc., but none of those other entities is a real party-in-interest for
this petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759-60
(Aug. 14, 2012). “[T]he ‘real party-in-interest’ may be . . . the party or parties at whose
behest the petition has been filed,” id. at 48,759, or “a party that funds and directs and
controls an IPR,” id. at 48,760.
Related Matters: ESCO Corp. v. Cashman Equipment Co. et al., No. 2:14-cv-
00529 (D. Nev. 2014); ESCO Corp. v. Cashman Equipment Co. et al., No. 2:12-cv-01545
(D. Nev. 2012) (collectively, “the Nevada litigation”); Petition for Inter Partes Review,
IPR2015-00409 (Ex. 1014).
Lead Counsel: Anthony M. Gutowski: Reg. No. 38,742; telephone:
571.203.2774; [email protected].
Back-up Counsel: Daniel C. Cooley: Reg. No. 59,639; telephone
571.203.2778; [email protected].
Back-up Counsel: Alyssa J. Holtslander: Reg. No. 64,026; telephone
202.408.4281; [email protected].
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
7
Service Information: Please send all correspondence to the lead counsel at:
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Two Freedom Square,
11955 Freedom Drive, Reston, VA 20190-5675. Petitioner consents to service by
e-mail at the following address: [email protected].
IV. Payment of Fees
The required fees are submitted herewith in accordance with 37 C.F.R.
§§ 42.103(a) and 42.15(a). If any additional fees to be paid by the Petitioner are due
during this proceeding, the Office is authorized to charge such fees to Deposit
Account No. 06-0916.
V. Grounds for Standing
Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’472 patent is
available for IPR and that Petitioner is not barred or estopped from requesting IPR of
the ’472 patent challenging the patent claims on the grounds identified in this petition.
The Patent Owner served Petitioner with its complaint less than one year ago in late
June 2014. See Ex. 1008 at 9.
A. At Least One Challenged Claim Is Unpatentable
As further detailed below, claims 1-20 of the ’472 patent are unpatentable
under 35 U.S.C. §§ 102 and/or 103. Thus, there is a reasonable likelihood that
Petitioner will prevail with respect to at least one of the claims challenged in this
petition. 35 U.S.C. § 314(a).
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
8
VI. Statement of Precise Relief Requested for Each Claim Challenged
Claims 1-20 of the ’472 patent are unpatentable and should be canceled in view
of the following prior art references and grounds of unpatentability.
Reference 1: U.S. Patent No. 6,085,448 to Gale et al. (“Gale”) (Ex. 1003).
Reference 2: U.S. Patent No. 4,505,058 to Peterson (“Peterson”) (Ex. 1004).
Reference 3: U.S. Patent Application Publication No. 2002/0000053 to
Adamic et al. (“Adamic”) (Ex. 1005).
Reference 4: U.S. Patent No. 6,079,132 to Clendenning (“Clendenning”) (Ex.
1006).
Ground 1: Claims 14-20 are unpatentable under 35 U.S.C. § 102(b) as
anticipated by Gale.
Ground 2: Claims 1-20 are unpatentable under 35 U.S.C. § 103(a) as obvious
over Gale and Peterson.
The ’472 patent issued from a pre-AIA patent application filed on December 5,
2012. The ’472 patent claims priority back, through a chain of multiple divisional
applications, to provisional application No. 60/787,268, filed on March 30, 2006.
Ex. 1001 at Cover Page. All of the prior art references cited in the present petition by
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
9
Petitioner were published at least one year prior to March 30, 2006, and therefore they
are prior art to the ’472 patent under 35 U.S.C. § 102(b). 1
VII. Background of the Technology
A. The ’472 Patent
The ’472 patent relates to wear assemblies for excavating
equipment. Ex. 1001 at 1:45-48. The disclosed wear
assembly 10 (shown to the right) includes a wear member
12, which may be a tooth, a shroud, or another kind of
wear part. Id. at 4:30-52. Wear member 12 is releasably secured to a base 15 by a lock
17. Id.
Lock 17 pivots in hole 81 of wear member 12 between a “release” (unlocked)
position that allows a user to install wear member 12 on base 15, id. at FIG. 23, and a
“hold” (locked) position that holds wear member 12 to base 15, id. at FIG. 25.
1 During prosecution of the application that matured into the ’472 patent, Adamic and
Peterson were cited to the PTO in an Information Disclosure Statement; however, the
Examiner never applied these prior art references.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
10
Lock moving from “release” to “hold” position (’472 Patent FIGS. 23 and 25)
Lock 17 is constructed of multiple parts, id. at 9:34-10:8, including a body 110,
a latch formation 115, notches 122, 124, and 126, and a resilient member 112, id. at
9:60-10:11, 11:20-32, FIGS. 18, 22 (below).
Perspective view and cross-sectional side view of lock (’472 Patent FIGS. 18 and 22)
The ’472 patent discloses that the lock is “integrally secured to the wear
member,” and that the lock and wear member can be “maintained as a single integral
component through shipping, storage, and installation . . . without reliance on
threaded members.” Id. at 2:56-3:5. According to the ’472 patent, the disclosed
arrangement “reduce[s] the risk of dropping or losing the lock during installation,”
“involves fewer independent components and an easier installation procedure,” and
“enables improved part management and easier installation of the wear member with
less risk of losing the lock.” Id. at 2:56-3:7. See Horton Decl. (“Ex. 1002”) ¶¶ 19-22.
Lock
Wear Member
Adapter
Tool
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
11
B. Scope and Content of the Prior Art
The concepts claimed in the ’472 patent were all well known at the time of the
alleged invention. Gale alone discloses most of the claimed features. Other documents,
including Peterson, Adamic, and Clendenning, confirm that persons of ordinary skill in the
art at the time of the alleged invention already recognized the need to secure a lock to
prevent it from falling out. Ex. 1002 ¶ 23. In addition, documents such as Peterson and
Adamic each disclose a wear assembly in which a lock is secured in both locked and
unlocked positions of the lock, irrespective of whether a tooth and an adapter of the
wear assembly are attached to or separated from one another. Id.
1. Gale
Gale is directed to a mechanical retention system for a ground engaging tool.
Gale explains that “[b]ecause of the loading forces and highly abrasive materials
encountered, ground engaging tools wear out rapidly and need to be replaced in order
to protect the parent material of the implement and to keep the implement working at
peak efficiency.” Ex. 1003 at 1:23-27.
To lengthen the usable life of the equipment,
Gale discloses a tooth 14 attached to an adapter 12
by a retainer 76 (FIG. 1, shown at right). Id. at 2:57-
64, 3:66-67, 4:18-28, FIGS. 1-3. Tooth 14 includes a
retainer opening 64, and adapter 12 includes a
retainer pocket 38 for receiving retainer 76. Id. at 4:13-28, 7:28-34, FIGS. 2, 3.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
12
Retainer 76 is compressible such that it compresses to fit in retainer opening 64 and
then expands to hold tooth 14 onto adapter 12. Id. at 4:2-28, 7:33-44; Ex. 1002 ¶¶ 27-
28.
During use, retainer 76 is compressed and inserted into retainer opening 64.
Ex. 1003 at 4:13-18, 7:33-35; Ex. 1002 ¶ 27. Following insertion of retainer 76 into
opening 64, a hammer or other tool is used to tap retainer 76 down such that a first
elevational (lower) portion 88 of retainer 76 is in retainer pocket 38 and a second
elevational (upper) portion 90 of retainer 76 remains in retainer opening 64. Ex. 1003
at 4:18-28, 7:35-38. A cover 106 may be placed on retainer 76 to prevent debris from
entering spring portion 86 during use. Id. at 4:48-55. However, cover 106 is optional.
Id. To remove tooth 14 from adapter 12, a screwdriver or other tool is used to pry
one end of retainer 76 such that retainer 76 is compressed and removed from retainer
pocket 38. Id. at 7:40-44. Annotated and revised versions of FIG. 3 below show an
example of how one of ordinary skill in the art at the time of the alleged invention
would have understood the process for installing and removing retainer 76. Ex. 1002
¶¶ 27-29.
Cross-sectional view of retainer in “unlocked position” (Gale FIG. 3)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
13
Front cross-sectional view of retainer in “locked position” (Gale FIG. 3)
Cross-sectional view of retainer in “tilted partially removed position” (Gale FIG. 3)
In sum, Gale discloses a wear assembly that has a wear member, a base in the
form of an adapter, a threadless lock secured to the wear member, a resilient member,
tool-receiving formations, latch formations, and other well-known features. Id. ¶ 30.
2. Peterson, Adamic, and Clendenning
Persons of ordinary skill in the art at the time of the alleged invention
recognized the need for preventing the loss of locking parts. Peterson teaches securing
Retainer Opening
Tooth
Retainer Adapter
Retainer moved down to the locked position from
the unlocked position and cover inserted
Retainer Opening
Retainer (edited to show tilted and in partially removed
position)
Tooth
Adapter
End of retainer pried up and out of retainer pocket
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
14
a retainer 51 to a wear part (e.g., adapter 12)2 in both locked and unlocked positions.
Id. ¶¶ 31-33; Ex. 1004 at 4:1-4, 4:49-52, 5:14-22, FIG. 4.
In particular, Peterson discloses inserting a retainer 51 into an opening 32 of
adapter 12 and then tapping a top connector 52 of retainer 51 with a hammer or other
tool until it is in the locked position. Ex. 1004 at 4:56-67; Ex. 1002 ¶ 32. In the locked
position, outward-slanted stretches 61 of retainer 51 abut against corner 63 to prevent
accidental removal of retainer 51 from adapter 12. Ex. 1004 at 4:49-52. To move
retainer 51 from the locked position to the unlocked position, a user inserts a blade of
a screwdriver under top connector 52 of retainer 51 and pries retainer 51 upward until
outward-slanted stretches 58 abut against projections 34 and tooth 11 can be removed
from adapter 12. Id. at 5:14-22, FIG. 4. After a new tooth 11 is installed, retainer 51 is
then pushed back to the locked position. Id. at 2:54-56, FIG. 4.
2 An adapter is a wear part under the ’472 patent’s own specification. See Ex. 1001 at
1:23-24, 4:48-50; see also ESCO’s U.S. Patent No. 7,367,144 to Jones et al., Ex. 1007 at
1:34-36.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
15
Cross-sectional view of retainer in locked and unlocked positions (Peterson FIG. 4)
Therefore, Peterson discloses securing retainer 51 to adapter 12 in both locked
and unlocked positions regardless of whether tooth 11 is inserted into adapter 12.
Ex. 1002 ¶ 33. Peterson states that “[s]ince the retainer is not normally removed from
the adapter, the danger of it becoming lost while a tooth is being replaced is
obviated.” Ex. 1004 at 2:60-62.
Other prior art references in the excavating art, such as Adamic, similarly
disclose securing a lock to a wear part (e.g., tooth). Ex. 1005 ¶¶ 0024-0030, FIGS. 7-9;
Ex. 1002 ¶ 34. Specifically, Adamic discloses a
lock for securing a wear member 1 to a support
structure 3, wherein the lock includes a retainer
and pin 13 (FIG. 7, shown to right). Ex. 1005
¶¶ 0008, 0026, 0028, FIGS. 6-9; Ex. 1002 ¶ 34.
An opening of wear member 1 is shaped so that the retainer snaps into a
groove and is held in the opening. Ex. 1005 ¶ 0026, FIGS. 8, 9. Pin 13 includes
external threads that engage internal threads of the retainer to hold pin 13 in the
Retainer in unlocked position
(broken line)
Retainer in locked position
(solid line)
Projections
Lock
Wear Member
Support Structure
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
16
retainer and, thus, in the opening of wear member 1. Id. ¶¶ 0024, 0028, FIG. 5; Ex.
1002 ¶ 35. Pin 13 also includes an end 14 that extends into an anterior cavity of wear
member 1 when pin 13 is fully threaded into the retainer and the retainer is held in the
opening. Ex. 1005 ¶ 0028, FIG. 5; Ex. 1002 ¶ 35.
Views of retainer (left, Adamic FIGS. 8, 9) and views of pin (right, Adamic FIG. 5)
During use, the protruding nose of support structure 3 is inserted into the
cavity of wear member 1. Ex. 1005 ¶¶ 0028-0029; Ex. 1002 ¶ 36. Pin 13 is then
rotated such that end 14 extends into a recess of support structure 3, thereby securing
wear member 1 to support structure 3. Ex. 1005 ¶¶ 0028-0029; Ex. 1002 ¶ 36. To
release wear member 1 from support structure 3, pin 13 is rotated in the reverse
direction until pin 13 clears recess. Ex. 1005 ¶ 0030; Ex. 1002 ¶ 36. Adamic discloses
that the releasing of wear member 1 from support structure 3 may be done by
retracting pin 13 far enough to clear recess while leaving pin 13 secured within the
retainer and the opening of wear member 1. Ex. 1005 ¶ 0030; Ex. 1002 ¶ 36. Thus,
retainer pin 13 is held within opening 5 of the wear member 1 when the wear member
is separate from support structure 3. Ex. 1005 ¶¶ 0028-0029; Ex. 1002 ¶ 36.
Retainer Pin
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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Finally, prior art references in the excavating art, such as Peterson and
Clendenning, recognized the need to prevent “unintentional dislodgment” of a lock
during use. Ex. 1004 at 4:67-5:1; see also Ex. 1006 at 1:41-63. Clendenning describes the
benefits of inhibiting movement between component parts of a wear assembly, such
as a tooth and a lock, to prevent undesirable wear to the component parts resulting in
the lock becoming loose and ultimately falling out and failing to hold the tooth onto
an adapter. Ex. 1006 at 1:41-63; Ex. 1002 ¶ 37.
Peterson, Adamic, and Clendenning demonstrate that the considerations described
in the ’472 patent for designing the claimed wear assembly and the features recited in
the claims were known and obvious at the time of the invention. Ex. 1002 ¶ 38.
VIII. Claim Construction
Claim terms are “generally given their ordinary and customary meaning,” which
is “the meaning that the term would have to a person of ordinary skill in the art in
question.” In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation
omitted). In the present proceeding, the Board should apply the broadest reasonable
interpretation (“BRI”) standard to construe claim terms. In re Cuozzo Speed Techs.,
LLC, 778 F.3d 1271, 1279-80 (Fed. Cir. 2015). Under the BRI standard, claim terms
are given their “broadest reasonable interpretation, consistent with the specification.”
In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); Trial Practice Guide at 48,764.
Because the BRI standard is not normally applied in district court litigations, the
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
18
constructions in this proceeding may differ from those in the Nevada Litigation. See
Exs. 1011, 1013.
A. One of Ordinary Skill in the Art
A person of ordinary skill in the art at the time of the alleged invention
(“POSITA”) of the ’472 patent would have a degree in mechanical engineering or
equivalent, and three to five years of machine design or application experience. Ex.
1002 ¶ 10. This level of skill is approximate and more experience would compensate
for less formal education, and vice versa. Id.
B. Claim Terms
The claim terms in the ’472 patent should be given their plain and ordinary
meaning under the BRI standard. To the extent that the Board construes the
following terms, they should be construed as outlined below.
1. “cavity”
To the extent that the Board construes “cavity,” as recited in independent claims
1 and 14, it should be construed to mean “a hollow space.” Id. ¶ 41. This construction
is consistent with the specification, which discloses a hollow space, defined by a
socket 16 that receives a base. Ex. 1001 at FIG. 3; see also id. at 3:10-12, 9:34-36, FIG.
4. Patent Owner previously proposed for “cavity” to be given its plain and ordinary
meaning or construed to mean “socket, pocket or space.” Ex. 1012 at 3.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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2. “a lock secured to the wear member in the lock opening”
To the extent the Board finds it necessary to construe “a lock secured to the
wear member in the lock opening,” as recited in claims 1 and 14, it should be
construed to mean “a lock that is held to the wear member such that the lock is in the
lock opening.” Ex. 1002 ¶ 42. This construction is consistent with the specification,
which discloses lock 17 being held such that lock 17 is in the opening with part of
lock 17 protruding outwardly from through hole 81 in wear member 12 (i.e., the lock
is not entirely within the opening). See Ex. 1001 at FIGS. 29, 31.
3. “the body and the resilient member are secured to each other for insertion in the lock opening as an integral unit”
The phrase “the body and the resilient member are secured to each other for
insertion in the lock opening as an integral unit,” as recited in claim 6 and similar
language in claims 10 and 15, should be construed according to its plain and ordinary
meaning under the BRI, or, if the Board finds it necessary, should be construed to
mean that “the body of the lock and the resilient member of the lock are held
together such that the lock can be inserted in the lock opening.” Ex. 1002 ¶ 43. This
construction is consistent with the broadest reasonable reading of the claim in line
with the specification, which states that “lock 17 is composed of a body 110, a
resilient member 112 and a shield 114 all bonded or otherwise secured together.”
Ex. 1001 at 10:9-11, 10:62-64; see also Ex. 1012 at 7.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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4. “latch formation”
The term “latch formation” in claims 9, 11, and 14 should be given its broadest
reasonable plain and ordinary meaning. If the Board finds it necessary to construe the
term, it should be construed to mean a “structure that can engage.” Ex. 1002 ¶¶ 44-
45. This construction is consistent with the specification, which discloses that “[w]ide
end 105 [of lock 17] includes a latch formation 115 that cooperates with end wall 87
to retain lock 17 in hold and release positions.” Ex. 1001 at 10:1-3; see also id. at
FIGS. 22, 23, 25. Patent Owner previously proposed the exact same construction in
the Nevada Litigation. Ex. 1012 at 8.
5. “being releasably securable in both hold and release positions to reduce the risk of dropping the lock during installation”
Claim 15 is an apparatus claim reciting that the lock is releasably securable in
both hold and release positions “to reduce the risk of dropping the lock during
installation.” In construing this claim phrase, the Board should give no weight to
“reduc[ing] the risk of dropping the lock during installation,” which is a recitation of
intended purpose. Ex parte Masham, 2 U.S.P.Q.2d 1647, 1648 (B.P.A.I. 1987). And,
thus, the Board should construe the entire claim phrase to mean that the lock has
freedom to move between the hold and release positions, and is held to the wear
member in both of these positions.
Alternatively, if the Board does give at least some weight to the intended
purpose, the Board should construe the entire claim phrase to mean that the lock has
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
21
freedom to move between the hold and release positions, and is held to the wear
member in both of these positions “such that the lock does not fall out when the
wear member is being installed on a base.” Ex. 1002 ¶ 46. These constructions are
consistent with the specification. See, e.g., Ex. 1001 at 3:1-7, 9:34-40; see also Ex. 1012 at
9 (Patent Owner construing “releasably securable” to have its plain and ordinary
meaning, or “securable with freedom to move”).
IX. Claims 1-20 of the ’472 Patent Are Unpatentable
Claims 14-20 are unpatentable under 35 U.S.C. § 102(b) because they lack
novelty, and all of claims 1-20 are unpatentable under 35 U.S.C. § 103(a) because they
would have been obvious to a POSITA.
A. Claims 1-20 Are Obvious in View of Gale and Peterson, and Claims 14-20 Are Anticipated by Gale
Claims 1-13 are unpatentable under 35 U.S.C. § 103(a) as being obvious over
Gale in view of Peterson. Claims 14-20 are anticipated by Gale under 35 U.S.C. § 102(b)
if the Board construes certain terms broadly, and these claims are also obvious under
35 U.S.C. § 103(a) over Gale in view of Peterson even if the Board construes the claim
terms more narrowly.
1. Claim 1
1.1 “A wear assembly for excavating equipment comprising”
Gale discloses a wear assembly for excavating equipment. Ex. 1002 ¶ 49.
Specifically, Gale describes a wear assembly in the form of an “earthworking
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
22
implement 10,” see Ex. 1003 at 2:57-59, including a mechanical retention system 16
that secures tooth 14 to adapter 12, id. at 2:62-64; Ex. 1002 ¶ 49.
1.2 “a wear member having a cavity for receiving a base on the excavating equipment”
Gale discloses a wear member having a cavity for receiving a base on the
excavating equipment. Ex. 1003 at 3:56-4:2; Ex. 1002 ¶ 50. Gale discloses a “tooth 14
(FIG. 1) [that] is preferably tapered with a sharp forward ground engaging edge 44 . . .
and a rearward mounting end portion 46 . . . [having] a nose receiving socket 48.”
Ex. 1003 at 3:38-43. Annotated FIG. 2 below shows a cross-sectional view of socket
48 of tooth 14 when tooth 14 is mounted on adapter 12. Ex. 1002 ¶ 50.
Side cross-sectional view of earthworking implement (Gale FIG. 2)
Socket 48 of tooth 14 defines a cavity (i.e., a hollow space). Ex. 1003 at 3:40-43,
FIGS. 1, 2; Ex. 1002 ¶ 51. Adapter 12 has a nose 20 that extends into socket 48. Ex.
1003 at 3:17-20, 3:40-51, FIGS. 1, 2. Thus, nose 20 is received in the cavity defined by
socket 48, as shown in annotated FIG. 2 above. Ex. 1002 ¶ 51.
Adapter
Tooth
Cavity
Retainer
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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1.3 “and a lock opening,”
Gale discloses a lock opening. Id. ¶ 52. Gale describes “a generally rectangular
retainer opening 64 disposed through one of the sidewalls of the mounting end
portion 46.” Ex. 1003 at 3:52-55. Retainer opening 64 (highlighted in green) is shown
in annotated FIGS. 2 and 3 of Gale below. Ex. 1002 ¶ 52.
Side (left) and front (right) cross-sectional views of earthworking implement (Gale FIGS. 2, 3)
1.4 “and a lock secured to the wear member in the lock opening for adjustment between a pre-established hold position where the lock holds the wear member to the base received into the cavity and a pre-established release position where the wear member can be installed on the base”
This limitation would have been obvious over Gale in view of Peterson. Id. ¶ 53.
Gale describes that retention system 16 includes an elongated spring retainer 76 for
securing tooth 14 to adapter 12. Ex. 1003 at 4:18-28; Ex. 1002 ¶ 53. Gale discloses that
retainer 76 is secured to tooth 14 in retainer opening 64 in a pre-established hold
position in which retainer 76 holds tooth 14 to adapter 12. Retainer 76 is secured by
flanges 92 engaged with an interior surface 94 (highlighted in blue) of tooth 14 as a
Adapter
Retainer
Retainer Opening (green)
Tooth
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
24
result of spring portion 86 forcing retainer 76 to expand, a first elevational portion 88
of retainer 76 positioned in retainer pocket 38 (highlighted in red), and a second
elevational portion 90 positioned in retainer opening 64 (highlighted in green), as
shown in annotated FIGS. 2 and 3 below. Ex. 1003 at 4:18-28, 7:35-38; Ex. 1002 ¶ 53.
Side (left) and front (right) cross-sectional views of retainer (Gale FIGS. 2, 3)
Furthermore, Gale discloses that retainer 76 is secured to tooth 14 in retainer
opening 64 in a pre-established release position in which tooth 14 can be installed on
adapter 12. Ex. 1003 at 4:13-18, 7:33-35; Ex. 1002 ¶ 54. Specifically, Gale describes
that retainer 76 is forcibly compressed to fit into retainer opening 64. Ex. 1003 at
4:13-18, 7:33-35; Ex. 1002 ¶ 54. A hammer or other tool is used to tap retainer 76
down through retainer opening 64. Ex. 1003 at 4:13-18, 7:33-35; Ex. 1002 ¶ 54. Thus,
retainer 76 is in a pre-established release position when secured end portions 82, 84
are compressed between opposing end surfaces 66, 68 of retainer opening 64 but
prior to a bottom surface 114 of retainer 76 being pushed below interior surface 94 of
tooth 14. Ex. 1002 ¶ 54. Furthermore, retainer 76 would be capable of being
Adapter
Tooth
Retainer
Retainer Opening (green)
Adapter
Tooth
Interior Surface (blue)
Retainer Pocket (red)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
25
compressed and partially tapped through retainer opening 76 such that the bottom
surface 114 of retainer 76 is not pushed below interior surface 94 of tooth 14. Id.
Annotated and modified FIG. 3 below shows an example of how a POSITA would
have understood that retainer 76 is secured in retainer opening 64 in the pre-
established release position. Id.
Cross-sectional view of retainer in “pre-established release position” (Gale FIG. 3)
Furthermore, Gale discloses that retainer 76 is adjustable between its pre-
established hold position and its pre-established release position. Id. ¶ 55. Retainer 76
is adjusted from the pre-established release position to the pre-established hold
position by the use of a hammer or other tool that taps retainer 76 down through
retainer opening 64. Ex. 1003 at 7:33-35; Ex. 1002 ¶ 55.
If claim 1 is construed to also require that the lock be capable of being adjusted
from the pre-established hold position to the pre-established release position, retainer
76 meets this limitation. Ex. 1002 ¶ 56. Gale describes that when retainer 76 is in the
pre-established hold position, a screwdriver is “inserted into one of the tool slots 104
and leverage is applied to the retainer 76 to cause it to be compress[ed] and pried out
Retainer Opening Retainer (edited to
show compressed and in pre-
established release position)
Adapter
Tooth
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
26
of the retainer pocket [38].” Ex. 1003 at 7:41-44. Although Gale describes that retainer
76 would be pried out of both retainer pocket 38 and retainer opening 64, retainer 76
is designed such that retainer 76 is capable of being moved back to the secured pre-
established release position. Ex. 1002 ¶ 56. Using tool slots 104 on both end portions
82, 84 of retainer 76, a user may insert a tool into one of the tool slots 104 and
partially pry retainer 76 out of retainer pocket 38 (see annotated and modified FIG. 3
below showing an example of how a POSITA would have understood that retainer 76
is positioned in a tilted partially removed position), and then insert the tool into the
other of the tool slots 104 to move retainer 76 from retainer pocket 38 and back into
the pre-established release position (see annotated and modified FIG. 3 below showing
an example of how a POSITA would have understood that retainer 76 is positioned in
the pre-established release position). Ex. 1002 ¶ 56.
Views of retainer in “tilted partially removed” and “pre-established release” positions (Gale FIG. 3)
Furthermore, to the extent that there is any question as to whether the retainer
is adjustable from its pre-established hold position to its pre-established release
Other end of retainer pried up and out of retainer pocket Retainer
Opening Retainer (edited to
show tilted and in
partially removed position)
Tooth
Adapter
End of retainer pried up and out of retainer pocket
Retainer (edited to show
compressed and in pre-established
release position)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
27
position, a POSITA would have found it obvious to modify Gale to provide such a
capability in order to further prevent the loss of locking parts, in view of the teachings
of Peterson. Id. ¶ 57. As noted above, Peterson describes the benefits of securing a
retainer to a wear part in both locked and unlocked positions for preventing the loss
of the retainer. Ex. 1004 at 2:60-62; Ex. 1002 ¶ 57. Specifically, Peterson describes
retainer 51 secured to adapter 12 in both locked and unlocked positions, as shown in
annotated FIG. 4 below. Ex. 1002 ¶ 57.
Cross-sectional view of retainer in locked and unlocked positions (Peterson FIG. 4)
Peterson discloses that a user inserts retainer 51 into an opening 32 of adapter 12
and taps a top connector 52 of retainer 51 with a hammer or other tool until the
retainer is in the locked position. Ex. 1004 at 4:56-67; Ex. 1002 ¶ 58. In the locked
position, outward-slanted stretches 61 of retainer 51 abut against corner 63 to prevent
accidental removal of retainer 51 from adapter 12. Ex. 1004 at 4:49-52; Ex. 1002 ¶ 58.
To move retainer 51 from the locked position to the unlocked position, a user inserts
a blade of a screwdriver under top connector 52 of retainer 51 and pries retainer 51
upward until outward-slanted stretches 58 abut against projections 34 and tooth 11
Retainer in unlocked position
(broken line)
Retainer in locked position
(solid line)
Projections
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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can be removed from adapter 12. Ex. 1004 at 5:14-22, FIG. 4; Ex. 1002 ¶ 58. After a
new tooth 11 is installed, retainer 51 is then pushed back into the locked position. Ex.
1004 at 2:54-56, FIG. 4; Ex. 1002 ¶ 58.
Thus, to the extent that there is any question as to whether the retainer is
adjustable from its pre-established hold position to its pre-established release position,
based on the teachings of Peterson, a POSITA would have found it obvious to modify
Gale to provide such a capability in order to further prevent the loss of the retainer
and to provide the ability to readily reconnect the tooth to an adapter after
disconnecting it from an adapter. Ex. 1002 ¶ 59.
Furthermore, if claim 1 were to be construed to also require that the lock must
be returned to the same position in the lock opening whenever it is moved to the pre-
established release position, it would have been obvious to a POSITA to add
projections at a middle portion of the retainer opening 64 disclosed in Gale, similar to
projections 34 described in Peterson, such that retainer 76 would not be
“unintentionally removed.” Ex. 1004 at 5:18-22; Ex. 1002 ¶ 60. A POSITA would be
motivated to make such a modification to further ensure that retainer 76 is not lost.
Ex. 1002 ¶ 60. Annotated and modified FIG. 3 of Gale below shows an example of
how a POSITA would have understood the retainer to be positioned in the pre-
established release position and how such projections may look.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
29
Cross-sectional view of retainer in “pre-established release position” with projections (Gale FIG. 3)
Thus, projections of the modified Gale system would allow a user to place
retainer 76 in a specific release position such that tooth 14 would be free to be
removed from adapter 12, but retainer 76 would not be unintentionally removed from
tooth 14. Id. ¶ 61. Furthermore, the projections would not interfere with the operation
or initial installation of retainer 76 into the release position. Id.
1.5 “the lock being secured to the wear member in both the pre-established hold position and the pre-established release position irrespective of the insertion of a base in the cavity”
The limitation of “the lock being secured to the wear member in both the pre-
established hold position and the pre-established release position irrespective of the
insertion of a base in the cavity” would have been obvious over Gale. Id. ¶ 62. This
limitation contemplates the lock being secured in four configurations of the lock and
the wear member: (1) when the lock is in the pre-established release position and the
base is inserted in the wear member’s cavity, i.e., the “release-inserted configuration”;
(2) when the lock is in the pre-established release position and the base is not inserted
Tooth
Adapter
Projections (edited to include
projections)
Retainer Opening
Retainer (edited to show compressed
and in pre-established release
position)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
30
in the wear member’s cavity, i.e., the “release-non-inserted configuration”; (3) when
the lock is in the pre-established hold position and the base is inserted in the wear
member’s cavity, i.e., the “hold-inserted configuration”; and (4) when the lock is in
the pre-established hold position and the base is not inserted in the wear member’s
cavity, i.e., the “hold-non-inserted configuration.” Id.
Gale discloses that retainer 76 is secured to tooth 14 when retainer 76 and tooth
14 are in the release-inserted configuration. Ex. 1003 at 4:8-18; Ex. 1002 ¶ 63.
Retainer 76 is secured to tooth 14 in this configuration by retainer 76 being
compressed in retainer opening 64 and flanges 92 pressing against opposing end
surfaces 66, 68 of tooth 14. Modified FIG. 3 below shows an example of how a
POSITA would have understood that retainer 76 is positioned in the release-inserted
configuration. Ex. 1003 at 4:8-18; Ex. 1002 ¶ 63.
Cross-sectional view of retainer in “release-inserted configuration” (Gale FIG. 3)
Gale also discloses that retainer 76 is secured to tooth 14 when retainer 76 and
tooth 14 are in the release-non-inserted configuration. Ex. 1003 at 4:8-18; Ex. 1002
¶ 64. Retainer 76 is secured to tooth 14 in this configuration in the same manner that
Retainer Opening
Retainer (edited to show compressed
and in pre-established release
position)
Adapter
Tooth
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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retainer 76 is secured in the release-inserted configuration: by retainer 76 being
compressed in retainer opening 64 and flanges 92 pressing against opposing end
surfaces 66, 68 of tooth 14, as shown in modified FIG. 3 below showing an example
of how a POSITA would have understood that retainer 76 is positioned in the release-
non-inserted configuration. Ex. 1003 at 4:8-18; Ex. 1002 ¶ 64.
Cross-sectional view of retainer in “release-non-inserted configuration” (Gale FIG. 3)
Retainer 76 is secured to tooth 14 in the hold-inserted configuration. Ex. 1003
at 4:18-28; Ex. 1002 ¶ 65.
Side (left) and front (right) cross-sectional views of retainer (Gale FIGS. 2, 3)
At a minimum, retainer 76 is secured by flanges 92 engaged with interior
surface 94 (highlighted in blue) of tooth 14 as a result of spring portion 86 forcing
Retainer (edited to show compressed
and in pre-established release
position) Tooth
Adapter
Tooth
Retainer
Retainer Opening (green)
Adapter
Tooth
Interior Surface (blue)
Retainer Pocket (red)
Retainer Opening
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
32
retainer 76 to expand, a first elevational portion 88 of retainer 76 positioned in
retainer pocket 38 (highlighted in red), and a second elevational portion 90 positioned
in retainer opening 64 (highlighted in green), as shown in annotated FIGS. 2 and 3
above. Ex. 1003 at 4:18-28, 7:35-38; Ex. 1002 ¶ 65.
It was well known to a POSITA that there was a need to inhibit movement
between component parts of a wear assembly, such as a tooth and a lock, to prevent
undesirable wear to the component parts resulting in the lock becoming loose and
unintentionally dislodged. Ex. 1006 at 1:41-63; Ex. 1002 ¶ 66. Furthermore, Peterson
describes that in the locked position, “outward sla[n]ted stretches 61 [of retainer 51]
lock against the outward flares 36, preventing unintentional dislodgment of the
retainer 51.” Ex. 1004 at 4:67-5:1; Ex. 1002 ¶ 66. Based on the teachings of Peterson, to
ensure that retainer 76 and retainer opening 64 do not become worn from relative
movement between the parts and thus to ensure that retainer 76 does not become
unintentionally dislodged during use, it would have been obvious to a POSITA to
design spring portion 86 of Gale to have dimensions (e.g., a length) sufficient to force
lower portions of bosses 102 into respective end surfaces 66, 68 of retainer opening
64 in the pre-established hold position such that retainer 76 would withstand a typical
impact load without shifting up and down or side to side within retainer opening 64
relative to tooth 14. Ex. 1002 ¶ 66. Such a modification would prevent the unwanted
wear and potential dislodgment of retainer 76 irrespective of whether cover 106 is
being used.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
33
In particular, a POSITA would modify the Gale system in view of Peterson such
that when retainer 76 is in its pre-established hold position, spring portion 86 would
be in a compressed state and would create an outward force (F) pressing against end
surfaces 66, 68 of retainer opening 64, which would be opposed by an equal and
opposite force (F) on bosses 102 of retainer 76 that would resist movement of
retainer 76, as shown in annotated FIG. 3 below.3 Id. ¶ 67. Thus, in addition to being
secured to tooth 14, retainer 76 would also be anchored to tooth 14 such that
unintentional dislodgment of retainer 76 would be further prevented.4 Id.
Front cross-sectional view of retainer in “hold-inserted configuration” (Gale FIG. 3)
Gale does not explicitly state that retainer 76 is “secured” to tooth 14 when
adapter 12 is not inserted into socket 48 of tooth 14 and retainer 76 is in the pre-
established hold position depicted below in annotated and modified FIG. 3, edited to
3 Forces in annotated FIG. 3 are not drawn to scale and positions are approximate.
4 Two parts that are anchored would necessarily be secured, but two parts that are
secured are not necessarily anchored.
Retainer
F F F F Tooth
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
34
remove adapter 28 (i.e., when retainer 76 and tooth 14 are in the hold-non-inserted
configuration). Id. ¶ 68.
Front cross-sectional view of retainer in “hold-non-inserted configuration” (Gale FIG. 3)
Gale states that in the pre-established hold position, spring portion 86 forces
flanges 92 of retainer 76 to expand such that “flanges 92 extend beyond the retainer
opening 64 and are positioned to engage an interior surface 94.” Ex. 1003 at 4:18-21.
Although Gale states that once flanges 92 pass the sides of retainer opening 64 of
tooth 14 during installation of retainer 76, spring portion 86 expands to its non-
compressed state, Gale also shows a lower portion (highlighted in orange) of
upstanding bosses 102 of retainer 76 abutting against respective end surfaces 66, 68
(highlighted in green) of retainer opening 64 of tooth 14, as shown below in
annotated FIG. 3. Ex. 1002 ¶ 69.
Front cross-sectional view of earthworking implement (Gale FIG. 3)
Retainer Tooth
Retainer Retainer Opening
(green) Lower Portion of
Bosses (orange)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
35
The obvious design of Gale’s spring portion 86, discussed above, would have
resulted in retainer 76 being anchored to tooth 14 whenever retainer 76 was in its
pre-established hold position, even when tooth 14 was separate from adapter 12 (e.g.,
in the hold-non-inserted configuration). Id. ¶ 70. Thus, with the obvious design of
Gale’s spring portion 86, retainer 76 would be anchored to tooth 14 irrespective of
whether or not adapter 12 was inserted into socket 48 of tooth 14, as shown in
annotated FIG. 3 below, edited to remove the adapter. Id.
Front cross-sectional view of earthworking implement (Gale FIG. 3)
For example, if tooth 14 was not inserted on adapter 12, the compression force
(F) would be opposed by an equal and opposite force (F) on lower portions of bosses
102. Id. ¶ 71. As a result of spring portion 86 being compressed in the pre-established
hold position, force (F) would cause friction between retainer 76 and end surfaces 66,
68 of tooth 14, thereby anchoring (and thus securing) retainer 76 to tooth 14 even
when adapter 12 was not inserted in socket 48 of tooth 14. Id. In other words,
because a POSITA would have been motivated to anchor the retainer to the tooth in
Retainer
F F F F
Tooth
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
36
the hold-inserted configuration, as a result, the retainer would also have been
anchored (and thus secured) to the tooth in the hold-non-inserted configuration.
In addition to securing the retainer to further prevent dislodgment of the
retainer during excavation as described above, a POSITA would have understood that
having retainers that are capable of being secured to wear parts in multiple positions,
including a position in which the lock is in a “hold-non-inserted configuration,” was a
well-known concept. Id. ¶ 72. As discussed above, Peterson discloses a retainer 51
capable of being secured to adapter 12 when tooth 11 is not inserted into adapter 12.
Ex. 1004 at 4:1-4, 4:49-52, 5:14-22, FIG. 4; Ex. 1002 ¶ 72; see also supra Section
VII.B.2. Furthermore, as also discussed above, Adamic discloses a retainer and pin 13
that are capable of being secured to wear member (tooth) 1 when support structure
(adapter) 3 is not inserted into wear member 1. Ex. 1005 ¶¶ 0024-0030, FIGS. 5, 8, 9;
Ex. 1002 ¶ 72; see also supra Section VII.B.2.
For at least these reasons, it would be obvious to a POSITA to modify the
wear assembly taught in Gale to secure the retainer to the tooth even when the tooth
is separate from the adapter and the retainer is in its hold position.
2. Claim 2: “A wear assembly in accordance with claim 1 wherein the lock includes a body and a resilient member”
Gale discloses a lock including a body and a resilient member. Ex. 1003 at 4:2-5;
Ex. 1002 ¶ 74. Gale describes that retainer 76 includes “a pair of opposite end
portions 82,84 and an integral convolute spring portion 86 between the end portions
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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82,84.” Ex. 1003 at 4:2-5. The body (highlighted in purple) and resilient member
(highlighted in aqua) are shown in annotated FIGS. 3 and 4 below. Ex. 1002 ¶ 74.
Cross-sectional view (left) and perspective view (right) of retainer (Gale FIGS. 3, 4)
3. Claim 3: “A wear assembly in accordance with claim 1 wherein the lock includes a bearing face that is moved into opposition with a complementary surface on the base when the lock is moved to the pre-established hold position”
Gale discloses a lock including a bearing face that is moved into opposition
with a complementary surface on the base when the lock is moved to the pre-
established hold position. Ex. 1003 at 4:18-28, FIG. 2; Ex. 1002 ¶ 75. Gale states that
when retainer 76 is in the pre-established hold position, “one side 78 (FIG. 2) of the
retainer 76 is in an abutting relation with the second abutment 42” of adapter 12. Ex.
1003 at 4:24-26, FIG. 2. The bearing face (highlighted in lime) and complementary
surface (highlighted in maroon) are shown in annotated FIG. 2 below.
Body (purple)
Resilient Member (aqua)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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Side cross-sectional view of earthworking implement (Gale FIG. 2)
4. Claim 4: “A wear assembly in accordance with claim 1 wherein the lock includes a tool-receiving formation for moving the lock between the pre-established hold position and the pre-established release position”
Gale discloses a lock including a tool-receiving formation for moving the lock
between the pre-established hold position and the pre-established release position. Id.
at 4:37-43, 7:41-44, FIGS. 3, 4. Gale describes that retainer 76 includes end portions
82, 84 each having an upstanding boss 102 with a tool slot 104 configured to receive a
tool to move retainer 76 from the pre-established hold position to the pre-established
release position. Id.; Ex. 1002 ¶ 76.
Should the claim be construed to require that the tool formation also be
configured to move retainer 76 from the pre-established release position to the pre-
established hold position, a top surface of bosses 102 is configured to receive a
hammer or other tool for tapping retainer 76 down or tool slots 104 could be used to
compress retainer 76 and push it down into the pre-established hold position. Ex.
1002 ¶ 76. Tool slots 104 (highlighted in yellow) and top surfaces (highlighted in pink)
of bosses 102 are shown in annotated FIGS. 3 and 4 below.
Adapter
Tooth
Retainer
Bearing Face (lime)
Complementary Surface
(maroon)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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Cross-sectional view (left) and perspective view (right) of retainer (Gale FIGS. 3, 4)
5. Claim 5: “A wear assembly in accordance with claim 2 wherein the resilient member resists movement of the body between the pre-established hold position and the pre-established release position”
Gale discloses that a resilient member resists movement of the body between
the pre-established hold position and the pre-established release position. Ex. 1003 at
4:2-28, 7:33-44. Spring portion 86 resists movement of end portions 82, 84 between
the pre-established hold and pre-established release positions. Id.; Ex. 1002 ¶ 77.
When retainer 76 is in the pre-established release position, spring portion 86 causes
flanges 92 of end portions 82, 84 to press against end surfaces 66, 68 of retainer
opening 64, thereby resisting movement of end portions 82, 84 of retainer 76 with
respect to retainer opening 64. Ex. 1003 at 4:2-28, 7:33-44; Ex. 1002 ¶ 77. Annotated
and modified FIG. 3 below shows an example of how a POSITA would have
understood retainer 76 to be positioned in the pre-established release position with
flanges 92 pressing against end surfaces 66, 68 of retainer opening 64.
Top Surfaces of Bosses
(pink) Tooth
Tool Slots (yellow) Adapter
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Cross-sectional view of retainer in “pre-established release position” (Gale FIG. 3)
Spring portion 76 also resists movement in the pre-established hold position.
Ex. 1002 ¶ 78. Furthermore, with the obvious design of Gale’s spring portion 86,
discussed in Section IX.A.1.5, supra, spring portion 86 would further resist movement
to avoid unintentional dislodgment of retainer 76. Ex. 1002 ¶ 78. In this position,
spring portion 76 causes flanges 92 to engage an interior surface 94 of tooth 14 “to
lock the retainer 76 in place in its tooth retaining position.” Ex. 1003 at 4:18-28, 7:35-
38, FIG. 3. Annotated FIG. 3 below shows retainer 76 in the pre-established hold
position with flanges 92 engaged against interior surface 94 of tooth 14.
Front cross-sectional view of retainer in “pre-established hold position” (Gale FIG. 3)
Retainer Opening Retainer (edited to
show compressed and in pre-
established release position)
Adapter
Tooth
Retainer
Retainer Opening (green)
Adapter
Tooth
Interior Surface (blue)
Retainer Pocket (red)
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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6. Claim 6: “A wear assembly in accordance with claim 2 wherein the body and the resilient member are secured to each other for insertion in the lock opening as an integral unit”
Gale describes that end portions 82, 84 and spring portion 86 are secured to
each other for insertion in retainer opening 64 as an integral unit. Id. at 3:67-4:18,
FIGS. 3, 4. Retainer 76 is preferably an integral casting constructed of spring steel or
other suitable metal including an integral convolute spring portion 86 between
opposite end portions 82, 84. Id. at 3:67-4:5. Since end portions 82, 84 and spring
portion 86 are made from a single piece of material to form an integral unit, end
portions 82, 84 and spring portion 86 are secured to each other during insertion of
retainer 76 in retainer opening 64. Ex. 1002 ¶ 79; see supra annotated FIGS. 3 and 4 in
Section IX.A.2.
7. Claim 7: “A wear assembly in accordance with claim 2 wherein the body is moved about an axis less than a single rotation as the body is adjusted between the pre-established hold position and the pre-established release position”
End portions 82, 84 are moved about an axis less than 360 degrees as retainer
76 is pried from the pre-established hold position to the pre-established release
position. Ex. 1003 at 4:37-43, 7:41-44. End portions 82, 84 may be pivoted
approximately 15 degrees from the horizontal and then back to horizontal to adjust
between the pre-established hold position and the pre-established release position. Id.;
Ex. 1002 ¶ 80. Retainer 76 is moved from the pre-established hold position to the
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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pre-established release position using a tool inserted into one of tool slots 104 to pry
retainer 76 out of retainer pocket 38. Ex. 1003 at 7:40-43, FIG. 3.
A POSITA would have understood that since retainer 76 includes a tool slot
104 on both end portions 82, 84, one obvious way for a user to move retainer 76
from its pre-established hold position to its pre-established release position would
have been for a user to insert a tool into one of the tool slots 104 to partially pry
retainer 76 out of retainer pocket 38 (see annotated and modified FIG. 3 below
showing an example of how a POSITA would have understood retainer 76 to be
positioned in a tilted partially removed position). Ex. 1002 ¶ 81. The user would then
insert the tool into the other of tool slots 104 to move retainer 76 from retainer
pocket 38 and place it back into the horizontal pre-established release position (see
annotated and modified FIG. 3 below showing an example of how a POSITA would
have understood retainer 76 to be positioned in the pre-established release position).
Ex. 1003 at 4:2-28, 7:41-44; Ex. 1002 ¶ 81. During removal, end portions 82, 84
would move about an axis less than a single rotation as the body is adjusted between
its pre-established hold position and its pre-established release position.
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Views of retainer in “tilted partially removed” and “pre-established release” positions (Gale FIG. 3)
8. Claim 8: “A wear assembly in accordance with claim 2 wherein the body is free of a threaded connection effecting the movement between the pre-established hold position and the pre-established release position”
Gale discloses that a body of a lock is free of a threaded connection effecting
the movement between the pre-established hold position and the pre-established
release position. Gale does not describe or illustrate retainer 76 as having any threads.
Ex. 1003 at 3:66-4:28; Ex. 1002 ¶ 82.
9. Claim 9: “A wear assembly in accordance with claim 2 wherein the body includes a latch formation for retaining the lock in the pre-established hold position and the pre-established release position”
Gale discloses that a body includes a latch formation (e.g., structure that can
engage) for retaining the lock in the pre-established hold position and the pre-
established release position. Ex. 1003 at 4:8-28, 7:33-38. Gale describes that end
portions 82, 84 include flanges 92 that retain retainer 76 in the pre-established hold
position and the pre-established release position. Id.; Ex. 1002 ¶ 83. “[F]langes 92
Other end of retainer pried up and out of retainer pocket
Retainer Opening
Retainer (edited to
show tilted and in
partially removed position)
Tooth
Adapter
End of retainer pried up and out of retainer pocket
Retainer (edited to show
compressed and in pre-established
release position)
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extend beyond the retainer opening 64 and are positioned to engage an interior
surface 94 of the top sidewall 50 to lock the retainer 76 in place” when retainer 76 is
in the pre-established hold position and thus retain retainer 76 in the pre-established
hold position. Ex. 1003 at 4:18-22, FIG. 3 (annotated below); Ex. 1002 ¶ 83. When
retainer 76 is in the pre-established release position, outer surfaces of flanges 92 press
against opposing end surfaces 66, 68 of opening 64 and resist up-and-down and side-
to-side movement of retainer 76 within retainer opening 64. Ex. 1003 at 4:8-18, 7:33-
38, FIG. 3; Ex. 1002 ¶ 83. This resistance retains retainer 76 in the pre-established
release position until a tool, such as a hammer, is used to move retainer 76. Ex. 1003
at 4:8-18, 7:33-35, FIG. 3 (annotated and modified below to show an example of how
a POSITA would have understood the retainer is positioned in the pre-established
release position and to explain how a latch formation (highlighted in peach) is
disclosed); Ex. 1002 ¶ 83.
Front cross-sectional view of retainer (Gale FIG. 3)
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10. Claim 10: “A wear assembly in accordance with claim 5 wherein the body and the resilient member are secured to each other for insertion in the lock opening as an integral unit”
Gale describes that end portions 82, 84 and spring portion 86 are secured to
each other for insertion in retainer opening 64 as an integral unit. Ex. 1003 at 3:67-
4:18, FIGS. 3, 4; Ex. 1002 ¶ 84; see also supra Section IX.A.6.
11. Claim 11: “A wear assembly in accordance with claim 10 wherein the body includes a latch formation for retaining the lock in the pre-established hold position and the pre-established release position”
Gale discloses that a body includes a latch formation for retaining the lock in
the pre-established hold position and the pre-established release position. Ex. 1003 at
4:8-28, 7:33-38; Ex. 1002 ¶ 85; see also supra Section IX.A.9.
12. Claim 12: “A wear assembly in accordance with claim 11 wherein the body is moved about an axis less than a single rotation as the body is adjusted between the pre-established hold position and the pre-established release position”
End portions 82, 84 are moved about an axis less than 360 degrees as retainer
76 is pried from the pre-established hold position to the pre-established release
position. Ex. 1003 at 4:37-43, 7:41-44; Ex. 1002 ¶¶ 86-87; see also supra Section IX.A.7.
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13. Claim 13: “A wear assembly in accordance with claim 12 wherein the body is free of a threaded connection effecting the movement between the pre-established hold position and the pre-established release position”
Gale discloses that a body of a lock is free of a threaded connection effecting
the movement between the pre-established hold position and the pre-established
release position. Ex. 1003 at 3:66-4:28; Ex. 1002 ¶ 88; see also supra Section IX.A.8.
14. Claim 14
14.1 “A wear assembly for excavating equipment comprising”
Gale discloses a wear assembly for excavating equipment. Ex. 1003 at 2:57-59;
Ex. 1002 ¶ 89; see also supra Section IX.A.1.1.
14.2 “a wear member having a cavity for receiving a base on the excavating equipment,”
Gale discloses a wear member having a cavity for receiving a base on the
excavating equipment. Ex. 1003 at 3:38-4:2; Ex. 1002 ¶¶ 90-91; see also supra Section
IX.A.1.2.
14.3 “and a lock opening,”
Gale discloses a lock opening. Ex. 1003 at 3:52-55; Ex. 1002 ¶ 92; see also supra
Section IX.A.1.3.
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14.4 “a lock secured to the wear member in the lock opening irrespective of the insertion of a base in the cavity to define a single integral component with the wear member and for movement between a hold position where the lock holds the wear member to the excavating equipment and a release position where the wear member can be installed on the base,”
Gale discloses a lock secured to the wear member in the lock opening
irrespective of the insertion of a base in the cavity to define a single integral
component with the wear member. Ex. 1002 ¶ 93. Gale describes a retainer 76. Ex.
1003 at 3:66-67. Gale also describes that retainer 76 is secured to tooth 14 in the
release position irrespective of the insertion of an adapter 12 in socket 48 because
retainer 76 is forcibly compressed to fit into retainer opening 64, and then a hammer
or other tool is used to tap retainer 76 down through retainer opening 64. Id. at 4:8-
18, 7:33-35; Ex. 1002 ¶¶ 93-94. Specifically, end portions 82, 84 are compressed
between opposing end surfaces 66, 68 of retainer opening 64. Ex. 1002 ¶ 93. Thus,
retainer 76 is held to tooth 14 such that retainer 76 is in retainer opening 64. Id.; see
also supra Section IX.A.1.5.
Gale also discloses that the lock moves between the hold position where the
lock holds the wear member to the excavating equipment and a release position where
the wear member can be installed on the base. Ex. 1002 ¶ 94. For example, Gale
discloses that retainer 76 is adjusted from the release position to the hold position by
the use of a hammer or other tool that taps retainer down through retainer opening
64. Ex. 1003 at 7:33-35.
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If claim 14 were to be construed to also require that the lock be capable of
being adjusted from the hold position to the release position, retainer 76 meets this
limitation. Ex. 1002 ¶ 94; see also supra Section IX.A.1.4. Furthermore, to the extent
that there is any question as to whether retainer 76 is capable of moving from its hold
position to its release position, a POSITA would have found it obvious to modify
Gale to provide such a capability in order to further prevent the loss of the retainer
and to provide the ability to readily reconnect the tooth to an adapter after
disconnecting it from an adapter, in view of the teachings of Peterson. Ex. 1002 ¶¶ 95-
97; see also supra Section IX.A.1.4.
Even if the phrase “a lock secured to the wear member in the lock opening
irrespective of the insertion of a base in the cavity to define a single integral
component with the wear member . . .” were to be interpreted to require that the lock
be secured to the wear member in both the hold and the release positions irrespective of the
insertion of the base in the cavity, this feature would have been obvious to a POSITA
in view of Peterson. As explained in Section IX.A.1.5, supra, Gale explicitly discloses that
retainer 76 is secured in the release-inserted configuration, the release-non-inserted
configuration, and the hold-inserted configuration. And it would have been obvious
to a POSITA in view of Peterson to anchor retainer 76 to tooth 14 for all of the
reasons already discussed in Section IX.A.1.5, supra, thus resulting in retainer 76 being
secured to tooth 14 in the hold-non-inserted configuration. Such a modified
configuration of Gale would allow for retainer 76 to be maintained with tooth 14
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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throughout installation and use. Because retainer 76 is combined with tooth 14 in all
of the aforementioned configurations to form a single unit, retainer 76 and tooth 14
would define a “single integral component.” Ex. 1002 ¶¶ 98-102.
14.5 “the lock including (i) a body having tool-receiving formation for moving the lock between the hold and release positions,”
Gale discloses a lock including a body having a tool-receiving formation for
moving the lock between the hold and release positions. Ex. 1003 at 4:37-43, 7:41-44,
FIGS. 3, 4; Ex. 1002 ¶ 103; see also supra Section IX.A.4.
14.6 “a latch formation to retain the lock in the hold and release positions, and”
Gale discloses a latch formation to retain the lock in the hold and release
positions. Ex. 1003 at 4:8-28, 7:33-38; Ex. 1002 ¶ 104; see also supra Section IX.A.9.
14.7 “a bearing face that is moved into opposition with a complementary surface on the base when the lock is moved to the hold position, and”
Gale discloses a body including a bearing face that is moved into opposition
with a complementary surface on the base when the lock is moved to the hold
position. Ex. 1003 at 4:18-28, FIG. 2; Ex. 1002 ¶ 105; see also supra Section IX.A.3.
14.8 “(ii) a resilient member that releasably maintains the lock in each of the hold and release positions.”
Gale discloses that the lock includes a resilient member that releasably
maintains the lock in each of the hold and release positions. Ex. 1003 at 4:2-28, 7:33-
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44. Spring portion 86 releasably maintains retainer 76 in each of the hold and release
positions. Id.; Ex. 1002 ¶¶ 106-107; see also supra Section IX.A.5.
15. Claim 15
15.1 “A wear assembly for excavating equipment comprising”
Gale discloses a wear assembly for excavating equipment. Ex. 1003 at 2:57-64;
Ex. 1002 ¶ 108; see also supra Section IX.A.1.1.
15.2 “a wear member having a lock opening, and”
Gale discloses a wear member having a lock opening. Ex. 1003 at 3:40-4:2; Ex.
1002 ¶ 109; see also supra Sections IX.A.1.2, IX.A.1.3.
15.3 “a lock including a body and a resilient member secured together for installation as a unit in the lock opening in the wear member and”
Gale describes that end portions 82, 84 and spring portion 86 are secured to
each other for insertion as a unit in retainer opening 64. Ex. 1003 at 3:67-4:18, FIGS.
3, 4; Ex. 1002 ¶ 110. Retainer 76 is preferably an integral casting constructed of spring
steel or other suitable metal, including an integral convolute spring portion 86
between opposite end portions 82, 84. Ex. 1003 at 3:67-4:5. Since end portions 82, 84
and spring portion 86 are made from a single piece of material to form an integral
unit, end portions 82, 84 and spring portion 86 are secured to each other during
insertion of retainer 76 in retainer opening 64. Ex. 1002 ¶ 110; see also supra Section
IX.A.2.
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15.4 “being releasably securable in both hold and release positions to reduce the risk of dropping the lock during installation”
Gale discloses this limitation. Gale discloses that retainer 76 has freedom to
move between the hold and release positions, and is secured to the wear member in
both the hold and release positions such that retainer 76 does not fall out when the
wear member is being installed to a base. See also supra Sections IX.A.1.4, IX.A.1.5. In
particular, retainer 76 is secured to tooth 14 in the release-inserted configuration by
retainer 76 being compressed in retainer opening 64 and flanges 92 pressing against
opposing end surfaces 66, 68 of tooth 14. Ex. 1003 at 4:8-18; Ex. 1002 ¶ 111. Retainer
76 is secured to tooth 14 in the hold-inserted configuration by flanges 92 engaged
with an interior surface 94 (highlighted in blue) of tooth 14 as a result of spring
portion 86 forcing retainer 76 to expand, a first elevational portion 88 of retainer 76
being positioned in retainer pocket 38, and a second elevational portion 90 positioned
in retainer opening 64. Ex. 1003 at 4:18-28, 7:35-38; Ex. 1002 ¶ 112. Therefore, since
Gale discloses the lock being releasably securable in these two configurations (i.e., the
release-inserted configuration and the hold-inserted configuration), Gale satisfies this
claim limitation.
Even if “being releasably securable in both hold and release positions” were
interpreted to require that the lock be “releasably securable” in both hold and release
positions irrespective of whether the wear member is installed, then this feature still would
have been obvious in view of Peterson. As discussed in Section IX.A.1.5, supra, Gale
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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explicitly discloses that retainer 76 is secured to tooth 14 in the release-inserted
configuration, the release-non-inserted configuration, and the hold-inserted
configuration. And it would have been obvious to a POSITA in view of Peterson to
secure retainer 76 to tooth 14 in the hold-non-inserted configuration for all of the
reasons already discussed in Section IX.A.1.5, supra. Because the lock of Gale would
be secured to tooth 14 in the configurations discussed above, this would necessarily
reduce the risk of dropping the lock during installation. Ex. 1002 ¶¶ 113-116.
15.5 “the lock being movable in the lock opening between the hold position where the lock holds the wear member to the excavating equipment and the release position where the wear member can be installed on the base”
Gale also discloses that the lock is movable in the lock opening between the
hold position where the lock holds the wear member to the excavating equipment and
the release position where the wear member can be installed on the base. Ex. 1002
¶ 117. For example, Gale discloses that retainer 76 is adjusted from the release
position to the hold position by the use of a hammer or other tool that taps retainer
76 down through retainer opening 64. Ex. 1003 at 7:33-35.
If claim 15 were to be construed to also require that the lock be movable (i.e.,
capable of being moved) from the hold position to the release position, retainer 76
meets this limitation. Ex. 1002 ¶ 117; see also supra Section IX.A.1.4. Furthermore, to
the extent that there is any question as to whether retainer 76 is capable of moving
from its hold position to its release position, a POSITA would have found it obvious
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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to modify Gale to provide such a capability in order to further prevent the loss of the
retainer and to provide the ability to readily reconnect the tooth to an adapter after
disconnecting it from an adapter, in view of the teachings of Peterson. Ex. 1002 ¶¶ 118-
120; see also supra Section IX.A.1.4.
16. Claim 16: “A wear assembly in accordance with claim 15 wherein the body includes a bearing face that is moved into opposition with a complementary surface on the base when the lock is moved to the hold position and that is moved out of opposition with the complementary surface on the base when the lock is moved to the release position”
Gale discloses a lock including a bearing face that is moved into opposition
with a complementary surface on the base when the lock is moved to the hold
position. Ex. 1003 at 4:18-28, 7:33-44, FIG. 2; Ex. 1002 ¶ 121; see also supra Section
IX.A.3. Gale also discloses that the bearing face is moved out of opposition with the
complementary surface on the base when the lock is moved to the release position. In
particular, retainer 76 is pried out of retainer pocket 38 and into the release position
when tooth 14 is to be removed such that side 78 no longer opposes second
abutment 42. Ex. 1003 at 7:41-44, FIG. 2; Ex. 1002 ¶ 122.
17. Claim 17: “A wear assembly in accordance with claim 16 wherein the lock includes a tool-receiving formation for moving the lock between the hold position and the release position”
Gale discloses a lock including a body having a tool-receiving formation for
moving the lock between the hold and release positions. Ex. 1003 at 4:37-43, 7:41-44,
FIGS. 3, 4; Ex. 1002 ¶ 123; see also supra Section IX.A.4.
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18. Claim 18
18.1 “A wear assembly for excavating equipment comprising”
Gale discloses a wear assembly for excavating equipment. Ex. 1003 at 2:57-64;
Ex. 1002 ¶ 124; see also supra Section IX.A.1.1.
18.2 “a wear member and a lock coupled together and maintained as a single integral component through installation and use”
Gale discloses that tooth 14 and retainer 76 are coupled together and
maintained as a single integral component through installation and use. Ex. 1003 at
4:8-28, 7:33-38, FIG. 3; Ex. 1002 ¶ 125; see also supra Sections IX.A.1.2-5. Gale
discloses a “tooth 14 (FIG. 1) [that] is preferably tapered with a sharp forward ground
engaging edge 44 . . . and a rearward mounting end portion 46 . . . [having] a nose
receiving socket 48.” Ex. 1003 at 3:38-43. End portions 82, 84 and spring portion 86
of retainer 76 are made from a single piece of material to form an integral unit, and
end portions 82, 84 and spring portion 86 are secured to each other during insertion
of retainer 76 in retainer opening 64. Ex. 1002 ¶ 126; see also supra Section IX.A.6.
When retainer 76 is in the release position, retainer 76 and tooth 14 define a
single integral component. Ex. 1002 ¶ 127. Retainer 76 is secured to tooth 14 in the
release position by retainer 76 being forcibly compressed to fit into retainer opening
64. Ex. 1003 at 4:13-18. End portions 82, 84 are compressed between opposing end
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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surfaces 66, 68 of retainer opening 64. Id.; Ex. 1002 ¶ 127; see supra Section IX.A.1.4.
Thus, retainer 76 is held to tooth 14 such that retainer 76 is in retainer opening 64.
If the Board were to give weight to “. . . maintained as a single integral
component through installation and use,” this would have been obvious in view of
Gale. Gale does not specify whether retainer 76 is installed on tooth 14 prior to or
after tooth 14 is placed on adapter 12. Ex. 1003 at 3:66-4:28, 7:28-38; Ex. 1002 ¶ 128.
But a POSITA would have known that retainer 76 may be installed in retainer
opening 64 of tooth 14 prior to tooth 14 being placed on adapter 12. Ex. 1002 ¶ 128.
Once retainer 76 is installed in retainer opening 64, tooth 14 and retainer 76 are
maintained as a single integral unit. Ex. 1003 at 3:66-4:28, 7:28-38; Ex. 1002 ¶ 128.
Positioning retainer 76 in this way would have been obvious to a POSITA because
there are a finite number of identified predictable potential ways of attaching retainer
76 to tooth 14. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); Ex. 1002 ¶ 128.
As evidenced by Adamic, one of those ways would be to secure retainer 76 to tooth 14
prior to installing tooth 14 on adapter 12. Ex. 1005 ¶¶ 0028-0029.
The assembled tooth 14 and retainer would then be placed over nose 20 of
adapter 12, and retainer 76 would be moved using a tool such as a hammer or other
tool such that a portion of retainer 76 is located in retainer pocket 38 and in the hold
position. Ex. 1003 at 3:38-51, 7:33-35; Ex. 1002 ¶ 129. This position is the hold-
inserted position. Ex. 1003 at 3:38-51, 7:33-35, FIGS. 2, 3; Ex. 1002 ¶ 129. In this
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
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position, tooth 14, retainer 76, and adapter 12 are all held together and able to be used
for excavation. Ex. 1003 at 1:51-54, 4:18-28, FIGS. 1-3; Ex. 1002 ¶ 129.
Even if the Board were to interpret “a wear member and a lock coupled
together and maintained as a single integral component through installation and use”
to require that the lock be coupled to the wear member and maintained as a single
integral component irrespective of the insertion of the base in the cavity and irrespective of whether
the lock is in the hold or release position, this feature would have been obvious to a
POSITA in view of Peterson. As discussed in Section IX.A.1.5, supra, Gale discloses that
retainer 76 is secured in the release-inserted configuration, the release-non-inserted
configuration, and the hold-inserted configuration. Ex. 1002 ¶ 130. And it would have
been obvious to a POSITA to anchor retainer 76 to tooth 14 for all of the reasons
already discussed in Section IX.A.1.5, supra, thus resulting in retainer 76 being secured
to tooth 14 in the hold-non-inserted configuration. Ex. 1002 ¶ 130. Such a modified
configuration of Gale would allow for retainer 76 to be maintained with tooth 14
throughout installation and use. Because retainer 76 would be secured to tooth 14 in
all of the aforementioned configurations, retainer 76 and tooth 14 would be a single
integral component through installation and use. Id.
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18.3 “the lock being adjustable between a hold position where the lock holds the wear member to the excavating equipment and a release position where the wear member can be installed on the base, and”
Gale also discloses that the lock is adjustable (i.e., capable of being adjusted)
between a hold position where the lock holds the wear member to the excavating
equipment and a release position where the wear member can be installed on the base.
Id. ¶ 131; see also supra Section IX.A.1.4. Retainer 76 is adjusted from the release
position to the hold position by the use of a hammer or other tool that taps retainer
76 down through retainer opening 64. Ex. 1003 at 7:33-35.
If claim 18 were to be construed to also require that the lock be adjusted from
the hold position to the release position, retainer 76 meets this limitation. Ex. 1002
¶ 132; see also supra Section IX.A.1.4. Furthermore, to the extent that there is any
question as to whether retainer 76 is capable of adjusting from its hold position to its
release position, a POSITA would have found it obvious to modify Gale to provide
such a capability in order to further prevent the loss of the retainer and to provide the
ability to readily reconnect the tooth to an adapter after disconnecting it from an
adapter. Ex. 1002 ¶¶ 133-135; see also supra Section IX.A.1.4.
18.4 “the lock being free of threads to effect the adjustment between the hold position and the release position.”
Gale discloses a lock being free of threads to effect the adjustment between the
hold position and the release position. Ex. 1003 at 3:66-4:28; Ex. 1002 ¶ 136; see also
supra Section IX.A.8.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
58
19. Claim 19: “A wear assembly in accordance with claim 18 wherein the lock includes a body with a bearing face that is moved into opposition with a complementary surface on the base when the lock is moved to the hold position and a resilient member that releasably maintains the lock in each of the hold and release positions”
Gale discloses that retainer 76 includes a body with a bearing face that is
moved into opposition with a complementary surface on the base when the lock is
moved to the hold position. Ex. 1003 at 4:18-28, FIG. 2; Ex. 1002 ¶ 137. Gale states
that when retainer 76 is in the hold position, “one side 78 (FIG. 2) of the retainer 76
is in an abutting relation with the second abutment 42” of adapter 12. Ex. 1003 at
4:24-26, FIG. 2; see also supra Section IX.A.3.
Gale also discloses that the lock includes a resilient member that releasably
maintains the lock in each of the hold and release positions. Ex. 1003 at 4:2-28, 7:33-
44. Spring portion 86 releasably maintains retainer 76 in each of the hold and release
positions. Id.; Ex. 1002 ¶¶ 138-139; see also supra Section IX.A.5.
20. Claim 20: “A wear assembly in accordance with claim 19 wherein the lock includes a tool-receiving formation for moving the lock between the hold position and the release position.”
Gale discloses a lock including a tool-receiving formation for moving the lock
between the hold position and the release position. Ex. 1003 at 4:37-43, 7:41-44,
FIGS. 3, 4; Ex. 1002 ¶ 140; see also supra Section IX.A.4.
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
59
X. Conclusion
For the reasons set forth above, claims 1-20 of the ’472 patent are unpatentable
and should be canceled. Caterpillar respectfully requests that the Board institute trial.
Respectfully submitted,
Date: April 17, 2015 By: /Anthony M. Gutowski/ Anthony M. Gutowski Reg. No. 38,742 Daniel C. Cooley Reg. No. 59,639 Alyssa J. Holtslander Reg. No. 64,026
U.S. Patent No. 8,689,472 Petition for Inter Partes Review
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I, Ashley F. Cheung,
certify that on this 17th day of April, 2015, a copy of the foregoing
PETITION FOR INTER PARTES REVIEW, Power of Attorney, and Exhibits
1001 through 1014 were served by Express Mail upon the following:
ESCO Corporation Legal-IP Group
2141 NW 25th Avenue Portland, OR 97210-2578
Date: April 17, 2015 By: /Ashley F. Cheung/ Ashley F. Cheung Case Manager Finnegan, Henderson, Farabow, Garrett & Dunner, LLP