Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 1 of 23 PageID #: 15406
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`CATERPILLAR, INC.,
`
`
`
`
`
`Defendant.
`
`
`Case No. 1:17-cv-00770-JDW-MPT
`
`
`
`
`
`
`
`
`
`MEMORANDUM
`
`
`
`Wirtgen America Inc. sued Caterpillar Inc., alleging that Caterpillar infringed
`
`thirteen of Wirtgen’s patents. Caterpillar countersued, alleging that Wirtgen infringed
`
`three of its patents. All the patents relate to machines used in road construction and
`
`repair. The Parties have presented disputes over the meaning of twelve disputed claim
`
`terms stemming from the following seven patents: (1) U.S. Patent No. 7,946,788 (‘788
`
`Patent); (2) U.S. Patent No. 8,511,932 (‘932 Patent); (3) U.S. Patent No. 8,690,474 (‘474
`
`Patent); (4) U.S. Patent No. RE48,268 (‘268 Patent); (5) U.S. Patent No. 7,523,995 (‘995
`
`Patent); (6) U.S. Patent No. 9,975,538 (‘538 Patent); and (7) U.S. Patent No. 9,371,618 (‘618
`
`Patent). I held a hearing January 24-25, 2023, and now resolve the disputed constructions.
`
`I.
`
`LEGAL STANDARD
`
`A.
`
`General Principles of Claim Construction
`
`“It is a bedrock principle of patent law that the claims of a patent define the
`
`invention to which the patentee is entitled the right to exclude.” Phillips v. AWS Corp., 415
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`CATERPILLAR, INC.,
`
`
`
`
`
`Defendant.
`
`
`Case No. 1:17-cv-00770-JDW-MPT
`
`
`
`
`
`
`
`
`
`MEMORANDUM
`
`
`
`Wirtgen America Inc. sued Caterpillar Inc., alleging that Caterpillar infringed
`
`thirteen of Wirtgen’s patents. Caterpillar countersued, alleging that Wirtgen infringed
`
`three of its patents. All the patents relate to machines used in road construction and
`
`repair. The Parties have presented disputes over the meaning of twelve disputed claim
`
`terms stemming from the following seven patents: (1) U.S. Patent No. 7,946,788 (‘788
`
`Patent); (2) U.S. Patent No. 8,511,932 (‘932 Patent); (3) U.S. Patent No. 8,690,474 (‘474
`
`Patent); (4) U.S. Patent No. RE48,268 (‘268 Patent); (5) U.S. Patent No. 7,523,995 (‘995
`
`Patent); (6) U.S. Patent No. 9,975,538 (‘538 Patent); and (7) U.S. Patent No. 9,371,618 (‘618
`
`Patent). I held a hearing January 24-25, 2023, and now resolve the disputed constructions.
`
`I.
`
`LEGAL STANDARD
`
`A.
`
`General Principles of Claim Construction
`
`“It is a bedrock principle of patent law that the claims of a patent define the
`
`invention to which the patentee is entitled the right to exclude.” Phillips v. AWS Corp., 415
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 2 of 23 PageID #: 15407
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`F.3d 1303, 1312 (Fed. Cir. 2005) (quote omitted). Claim construction is a matter of law. See
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325 (2015). “[T]here is no magic formula
`
`or catechism” for construing a patent claim, nor is a court “barred from considering any
`
`particular sources or required to analyze sources in any specific sequence[.]” Phillips, 415
`
`F.3d at 1324. Instead, a court is free to attach the appropriate weight to appropriate
`
`sources “in light of the statutes and policies that inform patent law.” Id. (citation omitted).
`
`A court generally gives the words of a claim “their ordinary and customary
`
`meaning,” which is the “meaning that the term would have to a person of ordinary skill in
`
`the art at the time of the invention, i.e., as of the effective filing date of the patent
`
`application.” Id. at 1312-13 (quotations omitted). Usually, a court first considers the claim
`
`language; then the remaining intrinsic evidence; and finally, the extrinsic evidence in
`
`limited circumstances. See Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323,
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`1331-32 (Fed. Cir. 2001). While “the claims themselves provide substantial guidance as to
`
`the meaning of particular claim terms[,]” a court also must consider the context of the
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`surrounding words. Phillips, 415 F.3d at 1314. In addition, the patent specification “is
`
`always highly relevant to the claim construction analysis and indeed is often the single
`
`best guide to the meaning of a disputed term.” AstraZeneca AB v. Mylan Pharms. Inc., 19
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`F.4th 1325, 1330 (Fed. Cir. 2021) (quotation omitted). But, while a court must construe
`
`claims to be consistent with the specification, the court must “avoid the danger of reading
`
`limitations from the specification into the claim ….” Phillips, 415 F.3d at 1323. This is a
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`
`
`2
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`
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`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 3 of 23 PageID #: 15408
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`“fine” distinction. Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87
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`(Fed. Cir. 1998). In addition, “even when the specification describes only a single
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`embodiment, the claims of the patent will not be read restrictively unless the patentee
`
`has demonstrated a clear intention to limit the claim scope using ‘words or expressions
`
`of manifest exclusion or restriction.’” Hill-Rom Svcs., Inc. v. Stryker Corp., 755 F.3d 1367,
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`1372 (Fed. Cir. 2014) (quotation omitted) (cleaned up).
`
`A court may refer to extrinsic evidence only if the disputed term’s ordinary and
`
`accustomed meaning cannot be discerned from the intrinsic evidence. See Vitronics Corp.
`
`v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996). Although a court may not use
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`extrinsic evidence to vary or contradict the claim language, extrinsic materials “may be
`
`helpful to explain scientific principles, the meaning of technical terms, and terms of art
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`that appear in the patent and prosecution history.” Markman v. Westview Instruments,
`
`Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). Extrinsic evidence is used “to ensure that the court’s
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`understanding of the technical aspects of the patent is consistent with that of a person of
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`skill in the art[.]” Phillips, 415 F.3d at 1318. The Federal Circuit has cautioned against
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`relying upon expert reports and testimony that is generated for the purpose of litigation
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`because of the likelihood of bias. Id.; see also Daubert v. Merrell Dow Pharms., Inc., 509
`
`U.S. 579, 595 (1993) (“Expert evidence can be both powerful and quite misleading because
`
`of the difficulty in evaluating it.”) (quotation omitted).
`
`
`
`3
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`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 4 of 23 PageID #: 15409
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`Ultimately, “[t]he construction that stays true to the claim language and most
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`naturally aligns with the patent’s description of the invention will be . . . the correct
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`construction.” Renishaw PLC v. Marposs Societa’ per Anzioni, 158 F.3d 1243, 1250 (Fed.
`
`Cir. 1998).
`
`B.
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`Construction of Means-Plus-Function Limitations
`
`When construing claim terms, a court must consider whether they are “mean-plus-
`
`function” limitations. 35 U.S.C. § 112(f) governs the interpretation of means-plus-function
`
`claim terms:
`
`An element in a claim for a combination may be expressed as a means or
`step for performing a specified function without the recital of structure,
`material, or acts in support thereof, and such claim shall be construed to
`cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof
`
`35 U.S.C. § 112(f). For patents that predate the America Invents Act, the same standard
`
`applies under former 35 U.S.C. § 112, ¶ 6.
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`
`
`To determine whether Section 112, ¶ 6 governs a claim, the “essential inquiry”
`
`is “whether the words of the claim are understood by persons of ordinary skill in the art
`
`to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).1 If a claim term does not use
`
`the word “means,” there is a rebuttable presumption that means-plus-function claiming
`
`under Section 112, ¶6 does not apply. See Williamson, 792 F.3d at 1349. To rebut it, a
`
`
`1 An en banc Federal Circuit joined the portion of the Williamson decision discussing the
`applicability of Section 112. See Williamson, 892 F.3d at 1347-49 & n.3.
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`4
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`challenger must demonstrate that a claim term either fails to “recite sufficiently definite
`
`structure” or recites “function without reciting sufficient structure for performing that
`
`function.” Id. at 1349. “The ultimate question is whether the claim language, read in light
`
`of the specification, recites sufficiently definite structure to avoid [Section] 112, ¶ 6.” MTD
`
`Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quote omitted).
`
`Courts use a two-step process to construe means-plus-function limitations. First,
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`the court must determine the claimed function. See Kemco Sales, Inc. v. Control Papers
`
`Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). Second, the court must identify the
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`corresponding structure that the specification discloses to perform that function. See id.
`
`When the specification discloses “distinct and alternative structures for performing the
`
`claimed function,” the proper construction should embrace each one. Creo Prods., Inc. v.
`
`Presstek, Inc., 305 F.3d 1337, 1346 (Fed. Cir. 2002). The structure disclosed in the patent
`
`specification that corresponds to the claimed function limits the scope of a means-plus-
`
`function claim. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
`
`1219 (Fed. Cir. 2003).
`
`C.
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`Indefiniteness
`
`“Indefiniteness is a matter of claim construction, and the same principles that
`
`generally govern claim construction are applicable to determining whether allegedly
`
`indefinite claim language is subject to construction.” Kyowa Hakka Bio, Co., Ltd v.
`
`Ajinomoto Co., No. CV 17-313, 2020 WL 3403207, at *5 (D. Del. June 19, 2020) (internal
`
`
`
`5
`
`
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`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 6 of 23 PageID #: 15411
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`quotations omitted). “The internal coherence and context assessment of the patent, and
`
`whether it conveys claim meaning with reasonable certainty, are questions of law.” Teva
`
`Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015). A party seeking to
`
`prove indefiniteness must do so by clear and convincing evidence. See BASF Corp. v.
`
`Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017); see also Cox Commc’ns, Inc. v.
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`Sprint Commc’n Co. LP, 838 F.3d 1224, 1228 (Fed. Cir. 2016).
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`“A patent’s specification must ‘conclude with one or more claims particularly
`
`pointing out and distinctly claiming the subject matter which the applicant regards as
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`[the] invention.’” Teva, 789 F.3d at 1340 (quoting 35 U.S.C. § 112, ¶ 2.) A patent claim is
`
`indefinite if, “viewed in light of the specification and prosecution history, [it fails] to inform
`
`those skilled
`
`in the art about the scope of the
`
`invention with reasonable
`
`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014).
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`6
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`Il.
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`CONSTRUCTION OF DISPUTED TERMS
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`A.
`
`“indication and setting devices”
`
`eee aeoiet (el ae(Ue
`Tiedt Cody
`
`olaee Meliidaliad(ely
`
`2-3, Figs. 6a-8d.
`
`“operating parameter
`“operating parameterinput
`Means-plus-function term
`input and display
`and display devices”
`under 35 U.S.C. §112, 16
`
`Function: “indicate the To the extentit is determined|devices”
`current actual value of and__|
`to be a means-plus-function
`to set a set value for the
`term under 35 U.S.C. §112, 1
`operating parameter sensed|6,1 the term is construed as
`by its associated sensor”
`follows:
`Structure: “indication and
`Function: “indicate the current
`setting device 2” and
`actual value of and to seta
`“indication and setting units|set value for the operating
`2a, 2b, 2c." ‘788 Patent
`parameter sensedbyits
`1:62-2:14, 2:15-30, 3:7— 25,|associated sensor”
`4:12-22, 4:37-43, 4:48-64,
`Structure: “indication and
`5:36-42, 6:45-56, Figs. 2-3,|setting device” and
`6a-8d.
`“indication and setting units,”
`and their equivalents. See
`‘788 Patent, at 1:62-2:14, 2:15-
`
`30, 3:7-25, 4:7-34, 4:35-67,
`
`5:26-42, 6:1-8, 6:16-22, 6:45-
`56, Figs. 2-3, Figs. 6a-8d; ‘932
`Patent, at 1:66-2:34, 3:11-28,
`4:10-5:10, 5:30-46, 5:49-67,
`6:5-12, 6:48-59, Figs. 2-3, Figs.
`6a-8d;'474 Patent, at 1:62-
`2:30, 3:7-24, 4:6-67, 5:26-63,
`6:1-8; 6:15-21; 6:43-54, Figs.
`
`This term appears in Claims 1 and 14 of the ‘788 Patent, Claims 9 and 17 of the
`=
`‘932 Patent, and Claims 19 and 26 of the ‘474 Patent.
`
`7
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`
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`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 8 of 23 PageID #: 15413
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`The term “indication and setting devices” recites a definite structure to a person of
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`skill in the art (“POSITA”). Courts presume that claim terms without the word “means” do
`
`not invoke Section 112, ¶ 6. See Samsung Electronics America, Inc. v. Prisua Engineering
`
`Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). A party urging otherwise can overcome that
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`presumption “only if the challenger demonstrates that the claim term fails to recite
`
`sufficiently definite structure or else recites function without reciting sufficient structure
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`for performing that function.” Id. at 1353-54 (quotation omitted).
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`Caterpillar has not offered any evidence that “indication and setting devices” fails
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`to recite a definite structure or recites function without structure. Both Parties use a form
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`of indication and setting device as their proposed structure. At most, Caterpillar points to
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`Dr. Rahn’s functional explanation of the devices. But Dr. Rahn’s functional explanation
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`does not prove that he, or any other POSITA, can only understand the claim language in
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`functional terms. To the contrary, Dr. Rahn states that skilled artisans understood
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`“indication and setting devices” to connote a class of structures. (D.I. 121-1 ¶ 60). He
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`supports his assertion by citing Caterpillar’s expert David Bevly, who explained in a prior
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`IPR proceeding that a POSITA would understand a previous patent to disclose a plurality
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`of indication and setting devices. (Id. ¶ 61.) Without any evidence to the contrary, Samsung
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`dictates that Section 112, ¶ 6, does not apply. Because Wirtgen’s proposed construction
`
`is consistent with the claim language and the specification, and Caterpillar has not offered
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`a construction other than means-plus-function, I adopt Wirtgen’s construction.
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`
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`8
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`B.
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`“withoutinterruption of [/interrupting] the milling operation”?
`
`eelmeee ateMnacemale
`oT ala die) y)
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`Court's Construction
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`control system”
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`“without leaving the “without stopping the act|“without stopping the act
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`automatic mode of the
`of milling”
`of milling”
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`This term requires construction because the boundsof “the milling operation” are
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`not clear. I adopt Wirtgen’s construction becauseit providesthis clarity: so long as the
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`machineis still grinding pavement, the milling operation is continuing. This construction
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`is also consistent with the PTAB’s construction of the same language in an earlier
`
`proceeding. (See D.I. 121-3 at 14-15.)
`
`I reject Caterpillar’s construction because the claim is not as limited as Caterpillar
`
`suggests. The claim language does not include any reference to an “automatic mode.”
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`Instead, the claim recites the ability to preselect and switch to different sensors. See eg.,
`
`‘788 Patent 7:31-37. Wirtgen described this capability at the claim construction hearing
`
`and noted that switchovers could result in momentarily leaving the automatic mode.
`
`However, these switchovers do not stop the milling drum or cause “anyerratic alteration
`
`of the at
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`least one adjustment value.” (£g.,
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`‘788 Patent 7:42-45.) Therefore,
`
`these
`
`switchovers meet the limits of the claim terms without meeting Caterpillar's proposed
`
`This term appears in Claims 1, 14, and 15 of the ‘788 Patent, Claims 1, 6, 9, and 17
`3
`of the ‘932 Patent, and Claims 1, 19, 26, and 33 of the ‘474 Patent.
`
`9
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`construction.In effect, Caterpillar’s construction requires a square whenonly a rectangle
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`is claimed. I cannot and will not adopt such a limited construction.
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`Cc.
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`“accommodatesa lack of alignment”*
`
`Teele eeeadelmace(ma
`Construction
`
`Oo eee Melitadels
`
`NotIndefinite
`
`Indefinite
`
`Not Indefinite
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`Caterpillar has not met its burden of showing by clear and convincing evidence
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`that a POSITA would not understand the term “accommodatesa lack of alignment.” See
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`Guangdong Alison Hi-Tech Co. v. International Trade Commission, 936 F.3d 1353, 1359-
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`60 (Fed. Cir. 2019). Caterpillar argues that the claim is indefinite becauseit fails to inform
`
`a POSITA of the range of misalignmentthe articulated coupling accommodates and how
`
`the articulated coupling accommodatessuch misalignment. Caterpillar offers no evidence
`
`in support ofits position, only attorney argument on supposed omissionsfrom the patent.
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`Muchof Caterpillar’s argument relies on “a lack of" being a term of degree. (DI.
`
`116 at 30-31). I disagree. “A lack of” is binary in this case: there eitheris or is not alignment.
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`The claim covers the smallest misalignment until the machine breaks. That this makes the
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`claim broad does not makethe term indefinite.
`
`a
`
`This term appearsin Claims 1, 14, and 34 of the ‘268 Patent.
`
`10
`
`
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`Even if “a lack of” were a term of degree, “[c]laim language employing terms of
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`degree has long been found definite where it provided enough certainty to one of skill in
`
`the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766
`
`F.3d 1364, 1370 (Fed. Cir. 2014). “[The Federal Circuit has] explained that a patentee need
`
`not define his invention with mathematical precision in order to comply with the
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`definiteness requirement.” Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., 30 F.4th
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`1339, 1347 (Fed. Cir. 2022).
`
`In this case, a POSITA would understand the misalignment accommodated with
`
`reasonable certainty. The specification describes the articulated coupling device
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`accommodating “a lack of precise alignment between the output axis of the drive engine
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`10 and the input axes of the clutch 14 and the drive pulley 11 due to dynamic movement
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`of the drive engine.” ‘268 Patent 6:25-29; see also id. at 5:20-24, 5:42-46. Likewise, the
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`language from the previous patent, of which the ‘268 Patent is a reissue, also explained
`
`the misalignment the invention accommodated:
`
`The purpose of the articulated coupling is to accommodate the very slight and
`temporary misalignments between the drive engine and the components of the
`second group which occur when the drive engine is allowed to slightly vibrate on
`its flexible mounting relative to the more rigidly mounted components of the
`second group.
`
`(D.I. 119-15 at WA-0012726). The specification and prosecution history, therefore, provide
`
`information from which a POSITA would understand the misalignment accommodated
`
`with reasonable certainty. Caterpillar offers only attorney argument to the contrary. This
`
`
`
`11
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`
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`is not enough to overcome the presumption of patent validity by clear and convincing
`
`evidence. See SunPower Corp.
`
`v. PanelClaw, Inc, C.A. No. 12-1633-MPT, 2016 WL
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`4578324, at *5 (D. Del. Aug. 31, 2016) (“Attorney argumentis generally insufficient to
`
`demonstrateinvalidity.”).
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`Like with the range argument, Caterpillar offers no evidence to show theclaim fails
`
`to describe how misalignment is accommodated. Nor do I believe it could offer such
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`evidence. The claims recite that an “articulated coupling accommodates a lack of
`
`alignment." That the specification only provides examplesof articulated couplings, rather
`
`than describing how articulated couplings work, does not doom the patent
`
`to
`
`indefiniteness. See Blue Calypso, LLC v. Groupon, Inc, 815 F.3d 1331, 1345-47 (Fed.Cir.
`
`2016). A POSITA would understand that an articulated coupling that accommodatesa lack
`
`of alignment is within the scope of the claim and rigid couplings are outside its scope.
`
`Thisis all that is required of a patent. See Nautilus, 572 U.S. at 901.
`
`D.
`
`“spring stiffness”°
`
`elemeee atlmmlacemale Court's Construction
`
`
`Construction
`
`deformation”
`
`“spring constant”
`
`“resistance to
`deformation”
`
`“resistance to
`
`2
`
`This term appearsin Claims 1, 14, and 34 of the ‘268 Patent.
`
`12
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`
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`This term requires construction because “spring stiffness” does not have a clear,
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`obvious meaning. I adopt Wirtgen’s construction for three reasons. First, it covers the full
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`range of materials offered as preferred embodiments, including those that are not linearly
`
`elastic. Second, it reflects that the supports are to be measured relative to each other –
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`read into the claim language, the second support has a higher resistance to deformation
`
`than the first. Third, the claim construction exercise is ultimately intended to frame a
`
`POSITA’s understanding in a way that is helpful to the eventual jury. This construction
`
`should be accessible to future jurors.
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`Caterpillar’s objection to “resistance to deformation” is that it does not reflect the
`
`elasticity limitation of the ‘268 Patent. But the disputed term does not require elasticity.
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`Rather, that requirement arises elsewhere in the claim, from the word “elastically.” The
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`first drive engine component must be supported elastically. The second need not. (‘268
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`Patent, Claim 1(b)-(c).) Because the disputed term does not require elasticity, I will not
`
`read this limit into the claim construction.
`
`Caterpillar’s proposed construction is inadequate for two reasons. First, the patent
`
`contemplates different forms of coupling that are not fully encapsulated by “spring
`
`constant,” such as elastomeric or rubber couplings. Second, a mathematical term used by
`
`physicists is unlikely to elucidate “spring stiffness” for the average juror.
`
`
`
`13
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`E.
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`“between projecting and retracted positions relative to said machine
`frame”®
`
`the machine frame”
`
`eelmeee ateMnacemale
`oT ala die) y)
`
`Court's Construction
`
`Plain and ordinary meaning|“between a position Betweenpositions that
`
`projecting outside the
`are farther from or closer
`machine frame and a
`to the machine frame
`position retracted within
`
`This term requires construction becauseit does not have a clear, obvious meaning.
`
`Therefore, I do not adoptCaterpillar's proposed plain and ordinary meaning construction.
`
`However, Caterpillar's explanation of the plain and ordinary meaning—that “in the
`
`‘projecting’ position, the rear ground engaging unit is farther awayrelative to the machine
`
`frame, while in a ‘retracted’ position, the rear ground engaging unit is closer relative to
`
`the machine frame,” (D.I. 117 at 17)—addsclarity that the term lacks and aligns with the
`
`claim language. So, I have adapted this construction.
`
`Wirtgen’s objection to this construction is that it supposedly defines the projected
`
`andretracted positions relative to other track positions, which “eliminates the distinction
`
`between the two positions” and “rendersrelative to said machine frame superfluous.” (D.L.
`
`117 at 20) (cleaned up). I disagree. The positionsarestill defined relative to the machine
`
`frame: “farther from or closer to the machineframe.” And the specification’s description
`
`of the projecting and retracted positions in singular terms with the definite article “the,”
`
`&
`
`This term appears in Claims 18 and 45 of the ‘995 Patent.
`
`14
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 15 of 23 PageID #: 15420
`
`‘995 Patent 4:38-44, indicates that the hypothetical Wirtgen proposes to illustrate its
`
`distinction, which involves a third position, is not at issue in the Patent. To the extent a
`
`third position exists and renders the claim indefinite, that is not what claim construction
`
`is intended to resolve. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
`
`Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996) (the purpose of claim construction is to
`
`“determin[e] the meaning and scope of the patent claims asserted to be infringed”).
`
`
`
`I also reject Wirtgen’s proposed construction because it adds limitations that the
`
`claim language doesn’t support. While the claimed “projecting position” and “retracted
`
`position” are determined “relative to the machine frame,” it does not follow that the
`
`“projecting position” must be outside of the machine fame or that the “retracted position”
`
`must be within the machine frame. Nor does the specification require I import Wirtgen’s
`
`proposed limitations. The figures are not inconsistent with my construction and the
`
`specification’s description of prior art machines does not limit the patented invention.
`
`
`
`15
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 16 of 23 PageID #: 15421
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 16 of 23 PagelD #: 15421
`
`F.
`
`“second actuatable meansforrotating said at least one ground
`engaging unit”’
`
`Court's Construction
`
`tate (ama
`Construction
`
` Means-plus-function term
`
`under 35 U.S.C. § 112, 1 6:
`
`Function: “rotate said at
`
`least one ground engaging
`unit aboutthelifting
`column axis"
`
`Structure: “a rotary
`actuator positioned at a
`top portion of thelifting
`column”
`
`eel ae me eelaieat iadiel y)
`
`Means-plus-function term
`under 35 U.S.C. § 112, 1 6:
`
`Function: “rotate said at
`
`least one ground engaging
`unit aboutthelifting
`column axis"
`
`Structure: “an actuator,
`suchasa linear or rotary
`actuator”
`
`
`
` Means-plus-function term
`
`under 35 U.S.C. § 112, 1 6:
`
`Function: “rotate said at
`
`least one ground engaging
`unit aboutthelifting
`column axis"
`
`Structure: “an actuator,
`suchasa linear or rotary
`actuator”
`
`
`
`The Parties agree that Section 112, 16, applies, and they agree uponthe function.
`
`Therefore,
`
`I skip to the second step of construing a means-plus-function term and
`
`“identify the corresponding structure that the specification discloses to perform that
`
`function.” See Kemco Sales, Inc, 208 F.3d at 1361. I adopt Caterpillar’s construction
`
`becausethe claimed structure is an actuator. See, e.g., ‘995 Patent 4:38-50.
`
`The patent is not limited to “a rotary actuator positioned at a top portion of the
`
`lifting column” as Wirtgen proposes. The specification discloses various kinds of actuators,
`
`including linear actuators. See ‘995 Patent 5:41-48; see a/so 4:61-62 ("at least one of the
`
`first and second actuators 42, 44 is a rotary actuator.”). And the claim itself dictates that
`
`4
`
`This term appearsin Claim 45 of the ‘995 Patent.
`
`16
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 17 of 23 PageID #: 15422
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 17 of 23 PagelD #: 15422
`
`the second actuatable means be “positioned at a location spaced apart from said first
`
`actuatable means,” notthat it be positioned at the top portion ofthe lifting column. While
`
`the specification does indicate that the use of a rotary actuator at the upperportion of
`
`the lifting columnis a preferred embodiment, see, e.g.,'995 Patent 5:17-24, this is not the
`
`only embodiment disclosed. And whenthe specification discloses “distinct and alternative
`
`structures for performing the claimed function,” the proper construction should embrace
`
`each one. Creo Prods., Inc., 305 F.3d at 1346.
`
`G.
`
`“a variable transmission”®
`
`Neelmeee adelmelace emale ol aeeesti
`
`
`eT et ately
`
`seamlessly”
`
`“transmission that can
`changetransmission
`ratios”
`
`“a stepless transmission
`that can change
`transmission ratios
`
`“transmission that can
`changetransmission
`ratios”
`
`A variable transmission can changeto provide varying speedsorratios. In fact, that
`
`technical understanding is so common,it has madeits way into commondictionaries, not
`
`just technical ones. See, e.g., NEW OXFORD AMERICAN DICTIONARY 1915 (Angus Stevenson &
`
`Christine A. Lindberg eds., 3rd ed. 2010) (defining “variable,” in the context of gears, as
`
`“designed to give varying ratios or speeds”). A POSITA’s understanding would mirrorthis
`
`common understanding of the term “variable” in the context of a transmission.
`
`Caterpillar’s construction reflects this without imposing furtherlimitations on the claim.
`
`-
`
`This term appears in Claims 1 and 6 of the ‘538 Patent
`
`17
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 18 of 23 PageID #: 15423
`
`I reject Wirtgen’s construction because neither the claim nor the specification
`
`requires the transmission to be stepless or seamless. (See, e.g., ‘538 Patent 1:35-37
`
`(“variable transmissions which allow for variations in the engine speed without affecting
`
`rotor speed.”).) Wirtgen does not explain why a two-speed transmission, or any other
`
`conventional multi-speed transmission, would not be variable transmissions. Wirtgen
`
`instead relies heavily on its expert’s testimony that a POSITA would understand a variable
`
`transmission to refer to a transmission that is both stepless and that can change
`
`transmission ratios seamlessly. (D.I.s 117 at 34; 118-11 ¶39). But its expert’s assertion that
`
`the plain and ordinary meaning of variable transmission is “a stepless transmission that
`
`can change transmission ratios seamlessly” is not persuasive. (D.I. 118-11 ¶35.) It runs
`
`counter to the common understanding illustrated by the dictionary definition above and
`
`appears to be based on other patents that discuss continuous and infinitely variable
`
`transmissions, which are more limited than the variable transmissions claimed in the ‘538
`
`Patent.
`
`In addition to its expert, Wirtgen points to the specification’s discussion of
`
`continuously variable transmissions. This discussion does not require I adopt Wirtgen’s
`
`construction, though. The inventors knew of and described continuously variable
`
`transmissions in the specification but did not import this limit to the claim language.
`
`Continuously variable transmissions are, therefore, a preferred embodiment. And this is
`
`
`
`18
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 19 of 23 PageID #: 15424
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 19 of 23 PagelD #: 15424
`
`not a means-plus-function term thatis limited to the embodiments disclosed. Cf Med.
`
`Instrumentation & Diagnostics Corp., 344 F.3d at 1219.
`
`H.
`
`“receiving a desired rotor speed”/“to maintain a desired rotor
`speed”?
`
`user-specified rotor speed”
`
`Teele eeeadelmace(ma
`ele ladcoly
`
`Oo eee Melitadels
`
`Plain and ordinary meaning|“receiving, by the “receiving [and/or] to
`
`controller, a user-specified|maintain a rotor speed
`rotor speed” / “to sustain a|based on userinputs”
`
`This term requires construction becauseit does not have a clear, obvious meaning.
`
`Adopting Caterpillar's construction would just kick the can downthe road as to arguments
`
`about whatthe plain and ordinary meaningis.
`
`The ‘538 Patent describes a controller system that maintains a rotor speed by
`
`varying the transmission ratio and engine speed. The controller can determine the rotor
`
`speed based on algorithmsstored in the controller memory oras the operatorsets it via
`
`an interface in the controller. Both methods require some form ofuser input, though. The
`
`memory method requires the user to input coefficients that allow the controller to
`
`calculate the desired rotor speed. And the operatorinterface method requires the user to
`
`input the desired rotor speeditself. For this reason, I adopt the construction “receiving
`
`[and/or] to maintain a rotor speed based onuserinputs.” I reject Wirtgen’s construction
`
`becauseit ignores the memory method and would require the user to set the rotor speed.
`
`a
`
`This term appears in Claims 1 and 6 of the ‘538 Patent.
`
`19
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 20 of 23 PageID #: 15425
`Case 1:17-cv-00770-JDW-MPT Document 167 Filed 03/10/23 Page 20 of 23 PagelD #: 15425
`
`L
`
`“predefined efficiency points” '°
`
`engine loads and speeds”
`
`eelmeee ateMnacemale
`oT ala die) y)
`
`Court's Construction
`
`Plain and ordinary meaning|“engine energyefficiency|“engine energy efficiency
`values defined prior to
`values set according to an
`machineoperation that
`established formula”
`correspondto specific
`
`This term requires construction because “predefined efficiency points” does not
`
`have a clear, obvious meaning. When these commonEnglish wordsare strung together
`
`in the claimed order, their meaning is not clear to me, nor would they be to a jury member
`
`or POSITA. Therefore,
`
`I
`
`reject Caterpillar's proposed plain and ordinary meaning
`
`construction.
`
`The Parties do not dispute that “efficiency points” are engine energy efficiency
`
`values; they only dispute how and whento set these values. Figure 4 and the claim
`
`languageindicate that there must be a formula (or formulas) to determine those values,
`
`with fuel consumption rates, optimum engine speeds, and engine loadsas inputs to the
`
`equation. Wirtgen’s proposed limitation “that correspond to specific engine loads and
`
`speeds” omits fuel consumption rates as an
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