N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ DEERE & COMPANY, Appellant

v.

RICHARD GRAMM, Appellee

______________________

2020

- 1488, 2020

- 1491

______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No s . IPR2015

- 00898, IPR2015

- 00899.

______________________
Decided: February 4 , 2021

______________________
J EFFRY M. N ICHOLS , Brinks Gilson & Lione, Chicago, IL, for appellant. Also represented by J AFON F EARSON , J OSHUA J AMES , L AURA A. L YDIGSEN

.

J OHN C OTTER , Larkin Hoffman Daly & Lindgren, Ltd., Minneapolis, MN, for appellee. Also represented by T HOMAS J OHN O PPOLD

.

______________________
Before L OURIE , D YK , and M OORE , Circuit Judges

. Case: 20-1488 Document: 49 Page: 1 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 2

L OURIE , Circuit Judge

. Over a half century ago , the Supreme Court decided a patent case between one Graham and John Deere, Graham v. John Deere Co. , 383 U.S. 1 (1966), which established the factual inquiries that underly the legal question of obviousness under 35 U.S.C. § 103. We now have an obviousne ss case between John D eere and another Gramm. John Deere is not so fortunate in the result this time.

In this case

, Deere & Co mpany (“Deere”) appeals from two final written decisions of the Patent Trial and Appeal Board (“Board”) holding that claims 1 2

– 26 of U.S. Patent 6,202,395 (the “’395 patent”) are not unpatentable as obvious. See Deere & Co. v. Gramm , No. IPR2015

- 00898, 2019 WL 7000106 (P.T.A.B Dec. 20, 2019); Deere & Co. v. Gramm , No. IPR2015

- 00899, 2019 WL 7000102 (P.T.A.B Dec. 20, 2019). 1 Because the Board did not commit legal error and substantial evidence supports the Board’s factual findings , we affirm

. B ACKGROUND Richard Gramm owns the ’395 patent directed to an

“ apparatus for detecting and controlling the height above the so il of an agricultural machine as it traverses a field. ” See ’395 patent col. 1 ll. 10

– 13. The ’395 patent explainsthat it can be important to maintain the header of a combine crop harvester “above the soil [at] a predetermined, fixed height

. ” Id

. col. 1 ll. 17

– 20. Maintaining a height above the soil is necessary to “avoid damage to the head caused by impact with the soil or other obstruction such as

a rock” and to avoid “ingestion of non

- crop debris which reduces harvesting efficiency and may also caus e damage to

1 The Board’s reasoning relevant to this appeal in both final written decisions was identical. In this opinion, we will cite the final written decision in IPR 2015

- 00898 and refer to it as “ Decision .” Case: 20-1488 Document: 49 Page: 2 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 3

the combine.” Id

. col. 1 ll. 22

– 27. However, the header “must also not be raised too high to avoid missing down plants which do not extend upwardly a sufficient distance.” Id

. col. 1 ll. 28

– 30.
Relevant to this appeal, the patented ap paratus contains a flexible sensor arm that engages the soil and is dragged across the ground as the combine crop harvester
t ravels in the forward direction. See i d . col. 2 ll. 22

– 33, col. 3 ll. 24

– 42 , col. 6 l. 9

– col. 7 l. 16. Attached to the sensor arm is a “ball 102 in the shape of an ellipsoid which engages the soil as the combine traverses a field.” Id. col. 6 ll. 17

– 19. The sensor arm includes “coiled spring 114, ” which “urges sensor arm 96 in a counterclockwise directio n of rotation about the motion sensor” and “ thus maintains the sensor arm 96 at an inclined angle , with the ball 102 trailing the bracket 26 as the ball engages the soil as the combine traverses the field.” Id

. col. 6 ll. 3 6

– 42. Figures 7 and 8 illustrat e an embodiment of the sensor arm :

’395 patent Figs. 7 and 8 (annotation added). Case: 20-1488 Document: 49 Page: 3 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 4

Claim 12 is the only independent claim at issue in this appeal:
12. Apparatus for maintaining a non

- cut crop header in a crop harvester a designated height above the soil as the crop harvester traverses a field, said apparatus comprising:

a generally linear arm coupled to the header and having first and second opposed ends, wherein the first end of said arm engages and is displaced over the soil as the header moves above th e soil;

a ngular deflection sensing means coupled to thesecond end of said arm for measuring a deflection of said arm when the first end of said arm encounters irregularities in the soil as the header moves above the soil and for providing a first signal r epresenting the extent of deflection of said arm;

b iasing means for urging said arm to a selected inclined orientation relative tovertical, wherein said arm in said selected inclined orientation extends below and aft of said angular deflection sensing means as the crop harvester moves in a forward direction , said biasing means allowing for forward displacement of the first end of said arm beyond vertical when the crop harvester is moved rearwardly while the first end of said arm engages the soil without damaging said arm, with said biasing means again urging said aim to said selected inclined orientation when the cropharvester is again moved in the forward direction or when the second end of said arm is removed from contact with the soil; and Case: 20-1488 Document: 49 Page: 4 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 5

c o ntrol means coupled to said header and saidangular deflection sensing means and responsive to said first signal for raising or lowering the header in accordance with said firstsignal in maintaining the header a designated height above the soil, wherein s aid flexible arm and angular deflection sensingmeans are attached to a head housing disposed on a forward portion of said combineand said head housing is comprised of polyurethane and includes a metal tip and a mounting bracket for attaching said metal
t ip to a forward end of said head housing, andwherein said mounting bracket further couples said flexible arm to a forward end of said head housing.

I

d. at col. 8 ll. 22

– 61 (emphasis added)

. Deere file d two petitions for inter partes review (IPR) of all claims of the ’395 patent. On September 23, 2015, the Board instituted review of claims 1

– 11 and 27

– 34, but not claims 12

– 26. On September 22, 2016, the Board issued a final written decision in each IPR holding claims 1

– 11 and 27

– 34 unpatentable as obvi ous. Deere & Co. v. Gramm , No. IPR2015

- 00898, 2016 WL 11503073 (P.T.A.B. Sept. 22, 2016); Deere & Co. v. Gramm , No. IPR2015

- 00899, 2016 WL 11503074 (P.T.A.B. Sept. 22, 2016). We affirmed the Board’s final written decisions

. Gramm v. Deere & Co. , 711 F. App’x 650 (Fed. Cir. 2018). However, in view of the Supreme Court’s decision in SAS Ins., Inc. v. Iancu

, 138 S. Ct. 1348 (2018), the Supreme Court vacated our affirmance and remanded the case for further consideration. Gramm v. Deere & Co. , 139 S. Ct. 244 (2018). We then recalled the mandate, again affirmed the Board’s holding regarding claims 1

– 11 and 27

– 34, and remanded to the Board for further proceedings regarding claims 12

– 26. Case: 20-1488 Document: 49 Page: 5 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 6

On De cember 20, 2019, the Board issued a final written decision in each IPR holding that claims 12

– 26 of the ’395 patent were not proven unpatentable as obvious. Deere appealed , and w e have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION

We revi ew the Board’s legal determinations de novo

, In re Elsner , 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s factual findings underlying those determinations for substantial evidence, In re Gartside , 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison Co. v. NLRB , 305 U.S. 197, 229 (1938). “If two ‘inconsistent conclusions may reasonably be drawn from the eviden ce in record, the PTAB’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence.’” Elbit Sys. of Am., LLC v. Thales Visionix, Inc. , 881 F.3d 1354, 1356 (Fed. Cir. 2018) (quo ting In re Cree, Inc. , 818 F.3d 694, 701 (Fed. Cir. 2016) (internal brackets omitted)).

Th is appeal centers on the “biasing means” limitation in claim 12

, and it is helpful to begin by establishing the several issues on which the parties agree. The partie s agree that, in construing the biasing means limitation, the Board correctly determined that it is a means

- plus

- function element that invokes 35 U.S.C. § 112( f ). The parties further agree that the Board correctly identified the three functions of the bia sing means as enumerated in the claim

, the first of which is:
urging said arm to a selected inclined orientationrelative to vertical, wherein said arm in said selected inclined orientation extends below and aft of said angular deflection sensing means as the crop harvester moves in a forward direction . . . . Case: 20-1488 Document: 49 Page: 6 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 7

’395 patent col. 8 ll. 35

– 39. And the parties agree that thecorresponding structure to achieve the functions of the biasing means is the “coiled spring” denoted as component 114 in the figures “and equivalents thereof.” Decision

, 2019 WL 7000106, at *5

– 7

. It is thus undisputed that in order to teach the biasing means limitation, a prior art reference must teach that a coiled spring or an equivalent thereof p erforms the function of urging the a rm to a selected inclined orientation relative to vertical.

The parties’ dispute concerns the Board’s application of its claim construction in comparing the claim to the prior art, specifically the Cleveland reference. 2 Deere contends that the Board com mitted legal error by deviating from its claim construction for the biasing means limitation. Deere insists that the Board improperly narrowed the claim to exclude a scenario in which the biasing mean s urg es the arm to the selected inclined orientation th rough contact with the ground. Deere argues that this claim construction

error led to the erroneous finding that Cleveland’s spring does not perform the first function of the biasing means.
Gramm responds that Deere has not actually raised a claim const ruction issue but rather a challenge to the Board’s factual findings about the content of Cleveland ’s teachings

. Gramm further argues that the Board’s findings regarding Cleveland are supported by substantial evidence. For the reasons that follow, we agr ee with Gramm.
First and foremost, we reject Deere’s attempt to obtain de novo review of a factual finding by reframing it as though it presents a claim construction issue. It is well

established that “[o]ur validity analysis is a two

- step procedure. ” TI Grp. Auto. Sys. (N

. Am.), Inc. v. VDO N. Am., L.L.C. , 375 F.3d 1126, 1139 (Fed. Cir. 2004) . “ T he first step involves the proper interpretation of the claims. The

2 U.S. Patent 3,611,286

. Case: 20-1488 Document: 49 Page: 7 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 8

second step involves determining whether the limitations of the claims as properly interpreted are met by the prior art.” Id

. (quoting Beachcombers, Int’l, Inc. v. WildeWood Creative Prods., Inc. , 31 F.3d 1154

, 1160 (Fed. Cir. 1994)). T he first step of i nterpreting the claims i s a question of law, but the second step of determining whether the alleged prior art met the claim limitations is a question of fact. Elmer v. ICC Fabricating, Inc. , 67 F.3d 1571 , 1574 (Fed. Cir. 1995) ; see also Graham , 383 U.S. a t 17

– 18 (establishing the “basic factual inquiries” underlying obviousness, including “the scope and content of the prior art” and the “differences between the prior art and the claims at issue”).
Here, after construing the biasing means limitation, the Bo ard determined that Cleveland did not teach the first function of the biasing means. That is a factual finding subject to appellate review for substantial evidence. In re Cuozzo Speed Techs. , LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015) (“What a reference t eaches and the differences between the claimed invention and the prior art are questions of fact which we review for substantial evidence.”) (citing In re Baxter Int ’ l, Inc. , 678 F.3d 1357, 1361 (Fed. Cir. 2012) )

. Deere attempts to contort the Board’s opinion by suggesting that the Board actually misconstrued the claim in such a way so as to not read on the teachings of Cleveland

. We are not persuaded by that argument, which seeks
to blur the clear delineation in the law between the two steps of the invalidity analysis

. 3
Moreover, Deere mischaracteriz es the Board’s finding s regarding Cleveland

. Deere truncates a quote from the Board ’s opinion and misleadingly asserts that the Board

3 Because we agree with Gramm that Deere’s argument is not actually based on claim construction, we decline to consider Gramm’s arguments that waiver and judicial estoppel should attach to any such claim construction argument. Case: 20-1488 Document: 49 Page: 8 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 9

found that “ Cleveland ’s spring urges the arm to the inclined orientation ‘ through contact with the ground. ’” Appellant Br. 19 (quoting Decision , 2019 WL 7000106, at *15). Deere then spends significant portions of its brief arguing the undisputed and unsurprising point that the functions of the biasin g means in claim 12 are carried out while the arm contacts the ground

. But the full quote from the Board’s decision reveals the flaw in Deere’s argument :
In Cleveland , it is only through contact with the ground that spring 38 is urged into an inclined orientation, not because of any urging function performed by spring 38

. Decision , 2019 WL 7000106, at *15 (emphases added). The Board found that Cleveland’s helical spring

— which als o functions as part of the “arm” in Cleveland’s apparatus, see J.A. 308 col. 2 ll. 59

– 65

— “is urged” into an inclined position

“ only ” by the ground

, and the spring does not itself do any “urging

. ” Thus, contrary to Deere’s assertion that the Board merely f ound that Cleveland ’s spring perform s the first biasing means function in a different way than the ’395 patent , the Board actually found that Cleveland ’s spring does not perform that function at all.

W e are thus left only with the question whether substantial evidence supports the Board’s finding that Cleveland’s spring does not perform the required function of “urg ing [the] arm into an inclined orientation relative to vertical

. ” To support that finding the Board relied on numerous disclosures from Cleveland regarding the “ elongated helical s pring 38 .” See Decision , 2019 WL 7000106, at *14

– 15. As stated in Cleveland:
Spring 38 is flexible along its longitudinal axis but is adapted to maintain its straight config uration in absence of bending forces being applied thereto. Spring 38 and swing member 20 together form an elongated member which is free to s w ing about the axis provided by hinge bolt 30. Case: 20-1488 Document: 49 Page: 9 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 10

J.A. 308 col. 2 ll. 60

– 65. The Board looked to Cleveland’s figure s, including Figures 2, 3, 6, and 7, which together demonstrate how the helical spring functions as part of Cleveland’s apparatus as it moves across a field :

J.A. 307 (annotations added) . The Board then relied on passages in Cleveland’s written descr iption, all of which demonstrate that Cleveland’s spring “ urges the arm to a vertical orientation, not a selected orientation relative to vertical.” Decision , 2019 WL 7000106, at *14

– 15 (quoting Cleveland’s disclosure at J.A. 309

– 310 col. 3 l. 67

– col. 4 l

. 26, col. 5 ll. 5

– 12). Th e Board thus found : In Cleveland, it is only through contact with theground that spring 38 is urged into an inclined orientation, not because of any urging function performed by spring 38. Cleveland makes this clear by purposel y constructing its device such that “

. . . helical spring 38 will be deflected in the manner shown in Fig. 7. ” Case: 20-1488 Document: 49 Page: 10 Filed: 02/04/2021DEERE & COMPANY v. GRAMM 11

Id. (quoting Cleveland’s disclosure at J.A. 309 col. 3 ll. 67

– 71). The disclosures in Cleveland that were cited by the Board constitute substantial evidence supporting the Board’s finding that Deere failed to show that Cleveland’s spring performs the first function of the biasing means in claim 12 of the ’395 patent.
Finally, we disagree with Deere ’s argument that this latest round of IPR decisions conflict s with the earlier final written decisions regarding claims 1

– 11 and 27

– 34. In those earlier decisions, the Board found that claim 4, which includes a “ biasing means for urging said flexible arm do wnward into engagement with the soil,” would have been obvious in view of the prior art. See Deere & Co. , 2016 WL 11503073, at *22; ’395 patent col. 7 ll. 65

– 67. But w e agree with the Board’s conclusion that:

“u rging said flexible arm downward into engag ement with the soil” (as recited in claim 4) is not the

same function as “urging said arm to a selected inclined orientation relative to vertical

. . .” (function [1] of the biasing means of claim 12).

Decision , 2019 WL 7000106, at *13. T he Board has neve r suggest ed that Cleveland’s spring does anything other than urge the flexible arm into engagement with the soil. The Board simply found here that Cleveland’s spring doesso by urging the arm “to a vertical orientation, not a selected orientation relative to vertical.” Id. at *15. As discussed above, that finding is supported by substantial evidence.

C ONCLUSION We have considered Deere’s remaining arguments but we find them unpersuasive. Accordingly, the Board’s final written decisions are affirmed

. AFFIRME D Case: 20-1488 Document: 49 Page: 11 Filed: 02/04/2021