Valmont Industries, Inc. v. LINDSAY CORPORATION, Cross-Appellant 2017-1235, 2017-1288 Appeals from the United…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VALMONT INDUSTRIES, INC.,
Appellant
v.
LINDSAY CORPORATION,
Cross-Appellant
______________________
2017-1235, 2017-1288
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
IPR2015-01039.
______________________
Decided: May 9, 2018
______________________
RICARDO B ONILLA, Fish & Richardson PC, Dallas, TX,
argued for appellant. Also represented by WES
MUSSELMAN, D AVID B RANDON CONRAD.
SCOTT R. BROWN, Hovey Williams LLP, Overland
Park, KS, argued for cross-appellant. Also represented by
MATTHEW B. WALTERS .
______________________
Before L OURIE, D YK, and HUGHES , Circuit Judges.

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 2
D YK, Circuit Judge.
Valmont Industries, Inc. (“Valmont”) appeals from the
final decision of the Patent Trial and Appeal Board (“the
Board”) in an inter partes review, finding claims 1–10,
12–15, 17, and 18 of U.S. Patent No. 7,003,357 B1 (“the
’357 patent”) unpatentable as obvious. Lindsay Corp.
(“Lindsay”) cross-appeals the Board’s determination that
claim 11 was not obvious. We affirm the Board’s determi-
nation of obviousness with respect to claims 1–10, 12–15,
17, and 18 and reverse as to claim 11.
BACKGROUND
The ’357 patent is directed to remotely monitoring
and controlling irrigation equipment using handheld
devices. A remote user interface displays icons, referred to
in this patent as graphical user interfaces (“GUIs”), which
show the status of irrigation equipment and allow its
control. Prior art systems monitored and controlled irriga-
tion equipment through personal computers. Because
personal computers are typically located at a base station,
these systems required users to return to the base station
to control the irrigation equipment. The ’357 patent is
directed to the use of handheld devices to allow a user to
view the status of and control irrigation equipment from
any location using wireless telemetry technology.
Claim 1 is illustrative and reads as follows:
A remote user interface for reading the status of
and controlling irrigation equipment, comprising:
a hand-held display;
a processor;
wireless telemetry means for transmitting signals
and data between the remote user interface and
the irrigation equipment; and

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 3
software operable on said processor for:
(a) displaying data received from the irrigation
equipment as a plurality of GUIs that are config-
ured to present said data as status information on
said display;
(b) receiving a user’s commands to control the ir-
rigation equipment, through said user’s manipula-
tion of said GUIs; and
(c) transmitting signals to the irrigation equip-
ment to control the irrigation equipment in ac-
cordance with said user’s commands.
’357 pat., col. 6 ll. 47–64.
Dependent claim 6 requires GUIs shaped to identify
particular types of irrigation equipment, and dependent
claim 10 requires GUIs shaped to identify operating
irrigation patterns for specific irrigation equipment.
Claim 11, which depends from claims 1, 6, and 10, further
requires:
The remote user interface of claim 10 wherein
said software is further operative on said proces-
sor to change the shape of said plurality of GUIs
change [sic] in response to a change in the status
of the irrigation equipment.
Id. at col. 7 ll. 29–32.
Claims 4 and 5 further require specific types of radio
links as the “wireless telemetry means.” Id. at col. 7 ll. 4–
8. Claim 17 describes a method of directly controlling
irrigation equipment with a single remote user interface.
Id. at col. 8 ll. 15–26.
The Board found that all of the challenged claims, ex-
cept claim 11, would have been obvious to a person of
ordinary skill in the art, but that claim 11 would not have

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 4
been obvious. Valmont appeals as to claims 1–10, 12–15,
17, and 18, and Lindsay cross-appeals as to claim 11. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). We
review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Rambus, Inc. v.
Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013).
D ISCUSSION
I
We first consider whether substantial evidence sup-
ports the Board’s determination that claims 1–10, 12–15,
17, and 18 would have been obvious.
A claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) if the differences between the claimed subject
matter and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person of ordinary skill in the
art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–07
(2007).
The Board found that claims 1–3, 6–10, 12–14, 17,
and 18 would have been obvious in view of the Scott and
Pyotsia references. Scott teaches remotely monitoring and
controlling an irrigation system using a computer to
display GUIs. Pyotsia teaches remotely monitoring and
controlling various types of field devices for industrial
processes using a handheld device displaying GUIs. The
Board found that a person of ordinary skill in the art
would have been motivated to combine the two references
because the handheld devices in Pyotsia provided greater
portability and mobility than the laptop computers in
Scott. The Board further determined that a person of skill
in the art would have had a reasonable expectation of
success in combining the two.
On appeal, Valmont argues that there was insuffi-
cient evidence of a motivation to combine Scott and Py-

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 5
otsia with a reasonable expectation of success. Valmont
urges that the handheld devices in Pyotsia lacked suffi-
cient display capabilities and computing capacity to
operate the Scott system. However, Dr. Rosenberg testi-
fied that at the time of the invention, a person of ordinary
skill would be able to employ the system of Scott on a
mobile device disclosed in Pyotsia. J.A. 1144. Dr. Rosen-
berg also testified that mobile phones at the time, includ-
ing the Nokia 9000 Communicator, the Benefon ESC!,
and the Sony Ericsson P800, could display GUIs and
receive user commands through manipulation of GUIs.
And Dr. Rosenberg testified that a person of ordinary skill
would have “the desire to provide enhanced portability
and mobility” and that “there has been a consistent desire
and goal of shrinking hardware and software to squeeze
the most functionality out of the smallest hardware
package available.” J.A. 1145, 2068. Substantial evidence
supports the Board’s determination that a person of
ordinary skill would have had a reasonable expectation of
success in combining Scott and Pyotsia and would have
been motivated to make the combination.
In addition to finding claims 1–3, 6–10, 12–14, 17, and
18 would have been obvious in view of Scott and Pyotsia,
the Board also found that claims 4, 5, and 15 would have
been obvious in view of Scott, Pyotsia, and Abts, another
prior art reference that discloses a system for controlling
and monitoring agricultural field equipment. Valmont
separately argues that claims 4, 5, and 17 would not have
been obvious. We conclude that substantial evidence
supports the Board’s decision with respect to these claims.
As to claims 4 and 5, which require specific types of radio
links, the Board found that the combination would have
been obvious because Scott specifically teaches using a
radio link to transmit signals, and Abts taught the specif-
ic type of radio links of claims 4 and 5. A person skilled in
the art would be motivated to add Abts to the combination

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 6
of Scott and Pytosia to select the type of radio link most
suitable to the environment for operating the system. As
to claim 17, which requires a single remote user interface
and direct control, the Board found that Pyotsia discloses
a single remote user interface and that Scott discloses
direct control. J.A. 29 (noting that Valmont “does not
dispute” that the combination of Scott and Pyotsia teaches
these two limitations of claim 17). As discussed above, a
person of ordinary skill would have been motivated to
combine Scott and Pyotsia because of the desire to operate
the Scott system on handheld devices for increased porta-
bility and mobility.
Thus, substantial evidence supports the Board’s de-
termination that claims 1–10, 12–15, 17, and 18 of the
’357 patent are unpatentable as obvious.
II
Valmont also argues that the Board improperly con-
sidered new arguments and evidence that Lindsay sub-
mitted in its reply and accompanying declaration. We
disagree.
Lindsay’s petition argued that the claims of the pa-
tent were obvious based on the combination of Scott and
Pyotsia, the same combination relied on by the Board to
find obviousness of claims 1–10, 12–15, 17 and 18. Lind-
say supplied a declaration from Dr. Rosenberg that stated
“it would have been obvious to one of ordinary skill at the
time to combine Scott with Pyotsia” because “one of
ordinary skill in the art could easily employ the monitor-
ing and controlling system of Scott . . . on a mobile phone
or PDA disclosed by Pyotsia” and “these inventions are
within the field of remote monitoring and control of field
devices, combined with the desire to provide enhanced
portability and mobility.” J.A. 1142, 1144, 1145. In its
patent owner response, Valmont submitted a declaration
from Dr. Mercer stating that a person of ordinary skill

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 7
could not easily combine the two references because
handheld devices did not have sufficient display capabili-
ties or computing capacity. Lindsay then responded with
a reply and a second supporting declaration from Dr.
Rosenberg, which explained that the handheld devices of
Pyotsia would have sufficient display capabilities and
computing capacity.
Valmont objected to the second Rosenberg declaration
as improper addition of new evidence. The Board rejected
Valmont’s objections, finding that Lindsay’s reply and
supporting evidence were limited to arguments responsive
to Valmont’s patent owner response, as required under 37
C.F.R. § 42.23(b). J.A. 39. Section 42.23(b) states that “[a]
reply may only respond to arguments raised in the corre-
sponding opposition, patent owner preliminary response,
or patent owner response.” 37 C.F.R. § 42.23(b).
Valmont argues that a petitioner is only allowed to
submit additional evidence not originally submitted with
the petition in two circumstances: (1) for addressing the
admissibility of objected-to evidence under 37 C.F.R.
§ 42.64 or (2) by seeking leave to submit supplemental
information under 37 C.F.R. § 42.123. This is incorrect.
No statutes or rules prohibit a petitioner from submit-
ting additional evidence after the petition, and § 42.23(b)
specifically permits it. Our case law makes clear that a
petitioner may submit additional evidence in the reply in
response to the patent owner response. In Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015), we
held that a patent owner “ha[d] not established that it
was denied its procedural rights” when a petitioner sub-
mitted a new declaration with its reply. See also Altaire
Pharms., Inc. v. Paragon Bioteck, Inc., No. 2017-1487, Slip
Op. at 14–17 (Fed. Cir. Apr. 25, 2018) (finding an abuse of
discretion when the Board failed to consider a second
declaration submitted with a reply that responded to

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 8
arguments raised in the corresponding patent owner
response); Genzyme Therapeutic Prod. Ltd. P'ship v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1364–69 (Fed. Cir.
2016) (finding it permissible for the petitioner to cite two
references in the reply that were not cited in the petition
to show the state of the art at the time). Thus, the Board
did not violate its rules or due process requirements in
concluding that the second Rosenberg declaration fairly
responds only to arguments made in Dr. Mercer’s declara-
tion and Valmont’s response.
The Board’s procedures in IPR proceedings provide
the patent owner with notice and opportunity to respond
as required by due process and the Administrative Proce-
dure Act. See 5 U.S.C. § 554(b)(3), (c), (d); In re Bieder-
mann, 733 F.3d 329, 336–37 (Fed. Cir. 2013); Abbott Labs.
v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013). In
Belden, we explained that “if the petitioner submits a new
expert declaration with its Reply, the patent owner can
respond in multiple ways.” 805 F.3d at 1081. Valmont
argues it was “deprived of the opportunity to try to ex-
clude or even respond to the arguments supported by this
new evidence [in the second Rosenberg declaration].”
Appellant Br. 30. In fact, Valmont cross-examined Dr.
Rosenberg, filed observations with the Board, and ad-
dressed the evidence at oral argument before the Board.
We see no error in the Board’s consideration of the second
Rosenberg declaration.
Valmont additionally argues that the second Rosen-
berg declaration should have been excluded because it
was necessary to make a prima facie case of obviousness,
as required by PTO rules and guidance. See 37 C.F.R.
§ 42.22(a)(2); Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,767. It goes on to argue at length that
“Lindsay’s petition failed to establish a prima facie case of
unpatentability.” Appellant Reply Br. 2. In Cuozzo Speed
Technologies, LLC v. Lee, 136 S. Ct. 2131, 2142 (2016), the

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 9
Supreme Court held that the “where a patent holder
merely challenges the Patent Office’s ‘determin[ation]
that the information presented in the petition . . . shows
that there is a reasonable likelihood’ of success ‘with
respect to at least 1 of the claims challenged,’ § 314(a), or
where a patent holder grounds its claim in a statute
closely related to that decision to institute inter partes
review, § 314(d) bars judicial review.” In that case, the
Supreme Court concluded that the patent owner’s claim
was “little more than a challenge to the Patent Office’s
conclusion, under § 314(a), that the ‘information present-
ed in the petition’ warranted review,” and was therefore
unreviewable. Id. The same is true with Valmont’s argu-
ment here, which seems to be a back-door attempt to
challenge whether the Board properly instituted review
based on whether the petition contained a prima facie
case of obviousness. Under Cuozzo, this contention is not
appealable.
III
Lastly, we address claim 11. Lindsay cross-appeals,
arguing that the Board erred in declining to find claim 11
obvious in view Scott, Pyotsia, and Abts.
Claim 11 depends from claims 1, 6, and 10. Claims 6
and 10 add the requirements that the remote user inter-
face display irrigation equipment status information as a
plurality of GUIs “shaped to identify particular types of
irrigation equipment” and “to identify operating irrigation
patterns for specific irrigation equipment.” ’357 pat., col. 7
ll. 9–14, 26–28. Additionally, claim 11 requires that the
software be operative “to change the shape of said plurali-
ty of GUIs change [sic] in response to a change in the
status of the irrigation equipment.” Id. at col. 7 ll. 29–32.
The Abts reference teaches displaying circle-shaped or
square-shaped GUIs in which status information as to

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 10
irrigation patterns is indicated in various ways, including
by shading, as shown below:
U.S. Patent No. 6,337,971 B1, fig. 5.
A
The first question is whether shading constitutes a
change in “shape.” In matters of claim construction before
the Board as to unexpired patents, we apply the broadest
reasonable construction standard. Cuozzo, 136 S. Ct. at
2144–45. The Board concluded that “shading within the
original GUI does not change the shape of the GUI.” J.A.
36. However, we conclude that a change in shape occurs
when there is a change in pattern, such as through shad-
ing.

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 11
Webster’s dictionary defines “shape” as “the visible
makeup characteristic of a particular item or kind of
item.” Webster’s Third International Dictionary 2087
(2002). A change in shading falls within this definition as
it is a change in the visible makeup characteristics of the
circle.
Most significantly, the specification discusses shading
and discloses that shading constitutes a change in shape.
For example, the specification describes a GUI to repre-
sent a pivot irrigation system that could be partitioned
into wedges to depict different settings along the pivot
path. It then states, “[d]ifferent colors or patterns can be
used to shade each wedge to depict the particular spray
pattern chosen for each wedge.” ’357 pat., col. 5 ll. 25–27.
It then describes how “cross-hatching” may represent one
setting and a “speckled pattern” may represent another.
It also teaches that the user can “modify each of the
wedge portions of the pivot GUI as desired.” Id. at col. 5 ll.
36–37. Thus, changes in shading of the GUI reflect a
change in status of irrigation patterns. This suggests that
a change in shading is a change in shape within the scope
of claim 11. See also id. at col. 4 ll. 23–25 (“It is contem-
plated that a system of color-coding could be incorporated
into the pivot GUI 122 to further indicate additional
status information.”).
Additionally, during oral argument before the Board,
Valmont conceded that shape includes the color within a
GUI, contrary to the Board’s limiting construction that
changing shape required changes to the circle itself. In
describing the claim requirements, Valmont argued that
“various things . . . can be done with the GUI to show
these different properties of each of the irrigation equip-
ment,” including “[i]t could be . . . a different color, wheth-
er it’s on or it’s off.” J.A. 2386.

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 12
Then, when the Board asked, “[d]o you have some-
thing in your spec that’s a GUI that is shaped like a piece
of equipment, shaped like a pattern and then changes to
show status?”, Valmont responded:
[T]he pictures don’t particularly show whether
there’s a change in color or a change in pattern
across the GUI. One thing to keep in mind is that
when it says the shape or the status information
in the GUI, shape doesn’t necessarily have to be
just that it’s a circle or just that it’s a triangle. It
could potentially be that it’s a circle that’s got
lines through it or a triangle that has a checker-
board pattern across it. So there’s different kinds
of shapes that it could be that would allow it to
show all of these different products.
Id. (emphasis added.) Thus, under Valmont’s own defini-
tion, a change in shading would constitute a change in
shape of the GUI.
Under the broadest reasonable construction standard,
a change in shape occurs when there is a change in shad-
ing.
B
The Board also determined that Abts did not disclose
GUIs shaped to identify an irrigation pattern. However,
we conclude that the circle-shaped GUIs in Abts are
shaped to identify an irrigation pattern. The Board’s
contrary decision is not supported by substantial evi-
dence.
Abts, like Scott itself, discloses circle-shaped GUIs to
represent pivot irrigation systems. ’971 pat., col. 20 ll. 22–
23 (“[I]con 610 is circular, and could be used to designate
a pivot.”); J.A. 305. Pivot irrigation systems by their
nature irrigate in circular patterns. Thus, the circle-
shaped GUIs are shaped to identify an irrigation pattern.

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VALMONT INDUSTRIES, INC. v. LINDSAY CORPORATION 13
Within the circular irrigation patterns, Abts teaches a
change in shading to reflect a change in irrigation pattern
because it teaches shading circle-shaped GUIs to update
irrigation equipment status information. ’971 pat., col. 4
ll. 42–46, col. 6 ll. 55–56, fig. 5. Contrary to the Board’s
determination, the combination of Scott, Pyotsia, and
Abts therefore discloses the limitations of claim 11. A
person skilled in the art would have been motivated to
add Abts to the already obvious combination of Scott and
Pyotsia to secure the advantages of visually identifying
changes in irrigation patterns. Valmont’s argument that
Abts merely disclosed “rudimentary graphics” does not
refute a finding of obviousness because the claims do not
require any particular resolution.
CONCLUSION
We affirm the Board’s denial of Valmont’s motion to
exclude and determination that claims 1–10, 12–15, 17,
and 18 of the ’357 patent are unpatentable as obvious. We
reverse the Board’s determination with respect to claim
11 and conclude that it is unpatentable as obvious.
AFFIRMED-IN-PART, REVERSED-IN-PART
COSTS
Costs to Lindsay.

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