filed on behalf of: caterpillar inc. by: anthony m. gutowski daniel...

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


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


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


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


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.


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


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.


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


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.


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


Back-up Counsel: Alyssa J. Holtslander: Reg. No. 64,026; telephone



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).


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


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.


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


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.


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)


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


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.


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


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


17

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


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.


19

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.


20

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


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


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


23

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


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


Adapter

Tooth

Interior Surface (blue)

Retainer Pocket (red)


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


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


Retainer (edited to show

compressed and in pre-established

release position)


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


28

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.


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)


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



position)

Adapter

Tooth


31

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



position) Tooth

Adapter

Tooth

Retainer


Adapter

Tooth



Retainer Opening


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.


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


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)


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


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


37

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)


38

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)


39

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


40

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


Adapter

Tooth




41

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


42

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.


43

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


Retainer (edited to show

compressed and in pre-established

release position)


44

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)


45

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”


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.


46

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


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.


47

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.


48

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


49

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-


50

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




15.2 “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”


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.


51

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


52

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


53

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,



54

18. Claim 18




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


55

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


56

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.


57

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.


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,



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


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

filed on behalf of: caterpillar inc. by: anthony m. gutowski daniel...

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