throbber
Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 1 of 26 PageID #: 29501
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR, INC.,
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`Defendant.
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`Case No. 1:17-cv-00770-JDW-MPT
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`MEMORANDUM
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`This patent litigation between Wirtgen America, Inc. and Caterpillar, Inc. concerns
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`patents for road construction and repair. Both sides have moved for partial summary
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`judgment. I conclude that Wirtgen doesn’t infringe on Claims 1 and 8 of Caterpillar’s ‘618
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`Patent and Caterpillar doesn’t infringe on Claim 17 of the ‘641 Patent. Further, IPR
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`estoppel will apply against Caterpillar, and there was no improper broadening of the ‘268
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`Patent. Conflicting expert testimony precludes granting summary judgment on the
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`remaining issues.
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`I.
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`BACKGROUND
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`Wirtgen and Caterpillar sell road construction machinery. On June 16, 2017,
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`Wirtgen filed this suit alleging that Caterpillar’s road-milling machines infringe twelve of
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`Wirtgen’s patents. Wirtgen later amended its Complaint to cover thirteen patents.
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`Caterpillar counterclaimed, alleging that Wirtgen infringes three of its patents.
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`On July 19, 2017, Wirtgen filed a complaint with the ITC, claiming infringement of
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`five of the twelve patents in Wirtgen’s initial complaint. Judge Andrews stayed this case
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`until the resolution of the ITC proceedings. The ITC found infringement for three patents
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`and issued a limited exclusion order. See Caterpillar Prodotti Stradali S.R.L. v. Int'l Trade
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`Comm'n, 847 Fed. App'x 893, 894 (Fed. Cir. 2021) (affirming infringement findings for
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`the ’530 and ‘309 Patents); D.I. 221-22 (ITC’s issuance of a modified exclusion order to
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`include the ‘641 Patent).
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`Both Parties moved for partial summary judgment. Those Motions cover eight
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`patents: seven belong to Wirtgen;1 and one belongs to Caterpillar.2 Wirtgen seeks
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`summary judgment declaring that Caterpillar infringes Claims 5, 16, and 22 of its ‘530
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`Patent; Claim 29 of its ‘309 Patent; and Claims 11, 17, and 18 of its ‘641 Patent. Wirtgen
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`also seeks a ruling that it does not infringe Claims 1 and 8 of Caterpillar’s ‘618 Patent.
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`Caterpillar seeks judgment finding that it does not infringe Claims 17 and 18 of
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`Wirtgen’s ‘641 Patent, Claim 10 of the ‘309 Patent, Claim 13 of the ‘972 Patent, and any
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`Claims of the ‘474 and ‘788 Patents. Caterpillar asks me to hold that it does not willfully
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`infringe on any of the asserted patents. Wirtgen also seeks summary judgment that it
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`1(1) U.S. Patent No. 7,828,309 (‘309 Patent); (2) U.S. Patent No. 7,530,641 (‘641 Patent);
`(3) U.S. Patent No. 9,656,530 (‘530 Patent); (4) U.S. Patent No. 8,690,474 (‘474 Patent);
`(5) U.S. Patent No. 7,946,788 (‘788 Patent); (6) U.S. Patent No. 8,424,972 (‘972 Patent);
`(7) U.S. Patent No. RE48,268 (‘268 Patent).
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`2 U.S. Patent No. 9,371,618 (‘618 Patent).
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`2
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 3 of 26 PageID #: 29503
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`didn’t improperly broaden its ‘268 Patent during reissue and that IPR estoppel applies
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`against Caterpillar. Caterpillar moves for a finding that Wirtgen did improperly broaden
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`the ‘268 Patent.
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`II.
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 56(a) permits a party to seek, and a court to enter,
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`summary judgment “if the movant shows that there is no genuine dispute as to any
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`material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). The moving party has the initial burden of proving the absence of a genuinely
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`disputed material fact relative to the claims in question. See Celotex Corp. v. Catrett, 477
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`U.S. 317, 330 (1986). Material facts are those “that could affect the outcome” of the
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`proceeding, and “a dispute about a material fact is ‘genuine’ if the evidence is sufficient
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`to permit a reasonable jury to return a verdict for the nonmoving party.” Lamont v. New
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`Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S.
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`242, 248 (1986)).
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`The burden then shifts to the nonmovant to demonstrate the existence of a
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`genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
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`586–87 (1986). A nonmoving party that asserts a genuine dispute about a fact must
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`support its assertion by: “(A) citing to particular parts of materials in the record,
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`including depositions, documents, electronically stored information, affidavits or
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`declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B)
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`3
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 4 of 26 PageID #: 29504
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`showing that the materials cited [by the opposing party] do not establish the absence ...
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`of a genuine dispute ....” Fed. R. Civ. P. 56(c)(1). When determining whether a genuine
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`issue of material fact exists, a judge must view the evidence in the light most favorable
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`to the non-moving party and draw all reasonable inferences in that party’s favor. See
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`Scott v. Harris, 550 U.S. 372, 380 (2007).
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`When the moving party would bear the burden of proof at trial, it must “show
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`that it has produced enough evidence to support the findings of fact necessary to win.”
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`El v. Se. Pennsylvania Transp. Auth. (SEPTA), 479 F.3d 232, 237 (3d Cir. 2007) (citation
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`omitted). In that instance, summary judgment is only appropriate if “a reasonable juror
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`would be compelled to find [the moving party’s] way on the facts needed to rule in its
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`favor on the law.” Id. “[D]oubts as to the sufficiency of the movant’s proof” suffice to
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`defeat summary judgment. Id.
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`When two experts offer conflicting opinions, so long as those opinions are
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`admissible and on point, there is a battle of the experts and summary judgment is
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`inappropriate. See Metro Life Ins. Co. v. Bancorp Svcs. LLC, 527 F.3d 1330, 1338-39 (Fed.
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`Cir. 2008). Because these expert issues are complex, my Policies And Procedures require
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`parties to file contemporaneous Daubert motions with summary judgment. The Parties
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`complied with that policy and filed motions to exclude certain expert opinions. However,
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`there are other instances in which one side or the other did not file a Daubert motion
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`but does challenge the applicability or weight of an expert’s analysis. For the purposes
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`4
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 5 of 26 PageID #: 29505
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`of summary judgment, absent an applicable Daubert motion, I must assume that the
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`expert’s position is admissible and treat it as part of the factual record. Therefore, when
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`there’s conflicting expert testimony on the record, as there is for many of the issues
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`presented below, I will deny summary judgment.3
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`III.
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`ANALYSIS
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`A.
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`Infringement
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`Infringement occurs when a person “without authority makes, uses, offers to sell,
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`or sells any patented invention, within the United States, or imports into the United States
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`any patented invention during the term of the patent ....” 35 U.S.C. § 271(a). “Determining
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`infringement requires two steps: construing the claims and comparing the properly
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`construed claims to the accused product.” Advanced Steel Recovery, LLC v. X-Body Equip.,
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`Inc., 808 F.3d 1313, 1316–17 (Fed. Cir. 2015).
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`When construing a claim, words “are generally given their ordinary and customary
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`meaning as understood by a person of ordinary skill in the art when read in the context
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`of the specification and prosecution history.” Thorner v. Sony Comput. Ent. Am. LLC, 669
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`F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
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`Cir. 2005) (en banc)). “In some cases, the ordinary meaning of claim language as
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`understood by a person of skill in the art may be readily apparent even to lay judges, and
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`3 Wirtgen’s technical experts are Dr. John Lumkes, Dr. John Meyer, and Dr. Christopher
`David Rahn. Caterpillar’s technical experts are Dr. Joseph F. Rakow and Dr. Adam Sorini.
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`5
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 6 of 26 PageID #: 29506
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`claim construction in such cases involves little more than the application of the widely
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`accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314. If the
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`meaning isn’t readily apparent, “the court should look first to the intrinsic evidence of
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`record, i.e., the patent itself, including the claims, the specification and, if in evidence, the
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`prosecution history.” Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331
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`(Fed. Cir. 2001). Then, a court may review extrinsic evidence, cognizant of its potential
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`unreliability and bias. See Phillips, 415 F.3d at 1318.
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`A judge may depart from a word’s ordinary and customary meaning only when a
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`patentee (1) sets out a definition and acts as his own lexicographer, or (2) disavows the
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`full scope of a claim term either in the specification or during prosecution. See Thorner,
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`669 F.3d at 1365. The judge must interpret the claim “with an eye toward giving effect to
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`all terms in the claim.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249,
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`1257 (Fed. Cir. 2010) (citation omitted). Readings that render claim language “superfluous”
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`or “meaningless” are disfavored. Id. (collecting cases).
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`Infringement is a question of fact. See Thorner, 669 F.3d at 1317. Accordingly,
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`summary judgment of noninfringement “is proper when no reasonable jury could find
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`that every limitation recited in a properly construed claim is found in the accused device
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`either literally or under the doctrine of equivalents.” Id. (citation omitted).4 The patentee
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`4 Caterpillar has filed a separate motion to exclude Wirtgen’s experts from opining that
`Caterpillar infringes under the doctrine of equivalents. Because I don’t rely on Wirtgen’s
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`6
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 7 of 26 PageID #: 29507
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`has the burden of proving infringement by a preponderance of the evidence. See Duncan
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`Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1360 (Fed. Cir. 2019). For literal
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`infringement, “every limitation set forth in a claim must be found in an accused product,
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`exactly.” Id.
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`Because Wirtgen would bear the burden of proof for its infringement claims at trial,
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`summary judgment is only appropriate if a reasonable juror would be compelled to find
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`in Wirtgen’s favor. See El, 479 F.3d at 237. When Caterpillar can point to gaps in the
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`evidence or legitimate reasons to doubt the credibility of Wirtgen’s experts, summary
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`judgment will be denied. See id. at 247.
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`1.
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`‘530 Patent
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`I can’t grant summary judgment for Wirtgen on Claim 1 of the ‘530 Patent
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`because a jury could credit Caterpillar’s expert and find that Wirtgen hasn’t carried its
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`burden. Claim 1 requires that the “lifting position sensor is coupled to two or more
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`components within its respective lifting column.” (D.I. 226-7 at 8:4-6.) Claims 5, 16, and
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`22 of the ‘530 Patent depend on Claim 1. Wirtgen’s expert, Dr. Lumkes, opines that the
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`lifting position sensor in the Accused Machines has two connection points with the
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`lifting column. Caterpillar’s experts, Dr. Rakow and Dr. Sorini, conclude that Dr. Lumkes
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`“has not shown that the Large Milling Machines satisfy Claim 1.” (D.I. 221-6 ¶ 73.)
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`experts’ DOE-related opinions in my analysis, or the doctrine of equivalents at all, I do
`not reach that issue in this Memorandum. I will address it in a separate Memorandum
`that resolves the various, pending Daubert issues.
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`7
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 8 of 26 PageID #: 29508
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`Drs. Rakow’s and Sorini’s opinions are not conclusory. Dr. Lumkes concludes that
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`the sensor is attached to the rod which in turn is attached to the column. In Drs. Rakow’s
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`and Sorini’s opinions, Dr. Lumkes hasn’t adequately shown how the sensor is connected
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`to the rod. Additionally, while Dr. Lumkes considers a component magnet as part of the
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`“lifting position sensor,” Drs. Rakow and Sorini opine that Dr. Lumkes hasn’t sufficiently
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`explained why that is true. (D.I. 221-6 ¶ 72.) If a jury were to credit one or both of Drs.
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`Rakow’s and Sorini’s opinions, it could find that Wirtgen hasn’t carried its burden of
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`proving infringement. That’s enough to deny summary judgment. See El, 479 F.3d at
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`237.
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`2.
`Caterpillar seeks summary judgment on Claim 10 of the ‘309 Patent, and Wirtgen
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`‘309 Patent
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`moves on Claim 29. Dueling expert testimony precludes granting summary judgment on
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`either.
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`a.
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`Claim 10
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`Conflicting expert testimony with regards to whether a pulley is a “wheel”
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`precludes granting summary judgment for Caterpillar on Claim 10. Claim 10 of the ‘309
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`Patent claims “a road-building machine ... characterized in that the valve control is
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`designed such that all the wheels are raised in a first operating mode and are lowered in
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`a second operating mode.” (D.I. 226-4 at 12:51-54.) Caterpillar argues that their
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`machines use a “caterpillar track assembly,” which isn’t equivalent to a wheel, so there’s
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`no infringement. (See D.I. 226-14 ¶¶ 55, 58.) But Dr. Lumkes opines that the round
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`8
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 9 of 26 PageID #: 29509
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`pulleys and gears in those track assemblies are literally wheels. I can’t discount that
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`section of Dr. Lumkes’s report because Caterpillar didn’t move to exclude it. Caterpillar’s
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`expert disagrees, so there’s a battle of the experts. A jury will have to resolve this claim.
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`b.
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`Claim 29
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`Claim 29 of the ‘309 Patent describes a four-sided stability pattern “in which the
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`widest transverse dimension falls within the milling rotor footprint.” (D.I. 226-4 at 14:33-
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`37.) Dr. Lumkes opines that the Accused Machines “include this claim element.”
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`(D.I. 221-4 ¶ 145.) Dr. Rakow says that opinion is lacking because Dr. Lumkes has not
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`provided “any references, calculations, or analyses” to support that conclusion. (D.I. 240-
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`2 ¶ 72.) Dr. Rakow concludes that without “valid references and calculations regarding
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`the nature, shape, and placement of the stability pattern of the Accused Products,” Dr.
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`Lumkes hasn’t shown infringement. (D.I. 240-2 ¶ 75.) Wirtgen hasn’t moved to exclude
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`Dr. Rakow’s opinion, so I must view it as part of the factual record. If a jury were to credit
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`this portion of Dr. Rakow’s opinion, Wirtgen wouldn’t be able to prove infringement. As
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`a result, I can’t grant summary judgment on infringement of the ‘309 Patent.
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`3.
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`‘641 Patent
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`There’s a genuine dispute of material fact as to whether the Caterpillar machines
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`practice Claims 11 and 18 of the ‘641 Patent, which relate to a machine’s “reverse travel
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`shutoff feature” that controls when a machine should automatically disengage to avoid
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`the milling drum hitting an obstacle. There’s no such dispute as to Claim 17.
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`9
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 10 of 26 PageID #: 29510
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`a.
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`Claim 11
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`Claim 11 requires that the machine “monitor[]” “the distance ... between the
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`rotating, raised milling drum and the ground.” (D.I. 226-3 at 8:17-18.) Although Wirtgen
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`contends that the Accused Machines indirectly monitor that distance, the only evidence
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`that it offers to support its position is the ITC’s written decision. The ITC’s decision is not
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`factual evidence. It is, instead, a decision that weighs evidence and applies the law.
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`Wirtgen’s reliance on the ITC decision as the sole evidence to support its argument means
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`that I could deny the motion just for a failure of proof. But there are other problems as
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`well.
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`Even if I treated the ITC’s decision as evidence, it would not suffice to carry
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`Wirtgen’s burden. The decision is not binding on me. See Tex. Instruments Inc. v. Cypress
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`Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). And the decision came in a
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`different procedural posture. The ITC weighed the parties’ evidence and reached a
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`conclusion, much like I would do after a bench trial. But, at this stage of the proceedings,
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`I can’t weigh the evidence. Instead, I have to credit any contrary evidence that Caterpillar
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`offers, and it has offered evidence from its Engineering Manager. Mr. Engelmann
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`describes Caterpillar’s reverse travel shutoff feature in a way that suggests that Caterpillar
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`monitors the position of machine components—and, indirectly, the rotor—compared to
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`the machine frame, not compared to the ground.
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`10
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 11 of 26 PageID #: 29511
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`Finally, even if I look under the hood at the evidence that the Parties submitted to
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`the ITC, there’s not enough there for me to grant summary judgment. The ITC decision
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`credits certain Caterpillar internal documents that suggest that Caterpillar’s reverse travel
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`shutoff feature indirectly monitors the ground position. And while a trier of fact could
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`reasonably reach the same conclusion that the ITC did, I can’t credit those presentations
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`in the face of other evidence that explains the technology differently. Because there is a
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`factual dispute, a jury will have to resolve this issue.
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`b.
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`Claim 18
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`Claim 18 depends on Claim 15 which requires, in relevant part, “that the milling
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`drum is raised by a pre-determined amount that is larger than a minimum distance
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`between the milling drum and the ground surface.” (D.I. 226-3 at 8:43-46 (emphasis
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`added)). I’ll adopt the ordinary meaning of the word and define “pre-determined” as
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`something that’s known ahead of time. Wirtgen says whenever the drum is raised at least
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`an amount that is larger than a minimum distance between the drum and the ground,
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`there’s infringement. But this interpretation reads the term “pre-determined” out of the
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`patent. “[I]nterpretations that render some portion of the claim language superfluous are
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`disfavored.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc'ns AB, 820 F.3d 419, 429 (Fed.
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`Cir. 2016). None of Wirtgen’s citations to the intrinsic evidence require me to depart from
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`this principle. Wirtgen argues that Caterpillar’s construction is divorced from the intrinsic
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`or extrinsic record, but all Caterpillar asks me to do is apply the “widely accepted meaning
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`11
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 12 of 26 PageID #: 29512
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`of commonly understood words” to the claim language. Phillips, 415 F.3d at 1314. The
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`pre-service mode on the Accused Machines, which raise the milling drum by an amount
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`that is known ahead of time, would satisfy this reading of the claim.
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`There’s a factual dispute as to whether Caterpillar actively induces infringement by
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`instructing operators to use the pre-service mode. Wirtgen proffers evidence of
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`inducement of the “reverse shutoff feature” on the Accused Machines. However, there’s
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`an aspect of that feature which would infringe Claim 18 (the pre-service mode) and an
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`aspect which wouldn’t (whenever the drum is raised to a height that isn’t known ahead of
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`time). So, while this proffered evidence is relevant to whether Caterpillar induces use of
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`the pre-service mode, it isn’t conclusive. See Manville Sales Corp. v. Paramount Sys., Inc.,
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`917 F.2d 544, 553 (Fed. Cir. 1990) (plaintiff holds the burden of proof for establishing
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`induced infringement). At this stage, Wirtgen hasn’t presented evidence that would
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`compel me to find in its favor. See El, 479 F.3d at 237. A jury will weigh this evidence
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`against Caterpillar’s contention that it doesn’t require or instruct operators to use the pre-
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`service mode.
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`c.
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`Claim 17
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`There’s no infringement on Claim 17 because, when driven in reverse, the scraper
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`blade in a Caterpillar machine isn’t behind the milling drum. Claim 17 of the ‘641 Patent
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`is a method claim where “a scraper blade ... is arranged behind the milling drum when
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`seen in the direction of travel is used as a sensing device.” (D.I. 226-3 at 8:65-66
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`12
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 13 of 26 PageID #: 29513
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`(emphasis added)). Acting as his own lexicographer, the patentee defined “direction of
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`travel” as when the milling drum and the traveling device rotate in the same direction.
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`(See id. at 2:2-5.) There are two possible directions of travel: forwards and backwards.
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`The location of the scraper blade on the Accused Machines is fixed and
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`undisputed. When the machine is driven forwards, the scraper blade is behind the
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`milling drum. When the machine is driven in reverse, the opposite is true: relative to the
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`milling drum, the scraper blade is now in front.
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`Wirtgen’s interpretation of the claim language reads out the phrase “when seen
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`in the direction of travel.” See SimpleAir, Inc., 820 F.3d at 429 (interpretations that render
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`claim language superfluous are disfavored). Wirtgen argues that because the position of
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`the scraper blade is fixed, the blade always remains behind the milling drum. And if the
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`phrase “when seen in the direction of travel” didn’t exist, then that reading might be
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`right. But the word “when” adds another element to the claim: the machine can be
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`travelling either forwards or backwards and, in both cases, the blade must be behind the
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`drum. Because the position of Caterpillar’s blade is fixed, it’s only “behind” the milling
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`drum in one direction.
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`There’s a reason that doctors use the terms anterior and posterior to mean what
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`a layperson may think of as “front” and “back”— those terms don’t change based on the
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`location of the observer or the orientation of the patient. Terms like “in front of” or
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`“behind” can be ambiguous because they depend on your point of view. The claim
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`13
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 14 of 26 PageID #: 29514
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`requires me to consider relative locations “seen in the direction of travel” (both forwards
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`and backwards). Wirtgen may have meant to write the claim so that it would encompass
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`Caterpillar’s machines. But since I must give meaning to the language “when seen in the
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`direction of travel,” Wirtgen’s argument that the blade remains behind the drum at all
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`times can’t succeed.
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`4.
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`‘972 Patent
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`Claim 13 of the ‘972 Patent requires that the controller establish “the parallel
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`orientation of the machine frame relative to the ground surface only when the controller
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`performs a readjustment of the milling depth of the milling roller or a setting of a
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`predefinable milling depth.” (D.I. 226-5 at 13:14-19 (emphasis added)). Wirtgen
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`interprets the phrase “only when” to mean “in the event that.” Its expert, Dr. Lumkes,
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`opines that the controller on the Accused Machines performs a “readjustment of the
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`milling depth of the milling roller or a setting of a predefinable milling depth ... only
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`after a milling adjustment.” (D.I. 226-13 ¶ 363 (emphasis added)). A jury could credit this
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`opinion and find infringement.
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`I won’t limit the phrase “only when” to mean “during,” as Caterpillar urges. The
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`ordinary and customary meaning of “when” is not as limited as the definition Caterpillar
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`offers. See Finjan, Inc. v. Bitdefender Inc., No. 17-CV-04790-HSG, 2019 WL 634985, at
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`*14 (N.D. Cal. Feb. 14, 2019) (noting that “when” can have both a conditional and
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`temporal meaning). Caterpillar’s position that I depart from this meaning is based solely
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`14
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`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 15 of 26 PageID #: 29515
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`on a portion of the patent that is a preferred embodiment. But I won’t “limit claim terms
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`by a preferred embodiment,” so I decline to adopt Caterpillar’s reading. Bell Atl.
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`Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001).
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`Because the disputed phrase isn’t as limited as Caterpillar proposes, Dr. Lumkes’s
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`opinion isn’t foreclosed as a matter of law. A jury could credit his opinion that the
`
`controller performs a “readjustment of the milling depth of the milling roller or a setting
`
`of a predefinable milling depth ... only after a milling adjustment.” (D.I. 226-13 ¶ 363.)
`
`The record does not support Caterpillar’s contention that Dr. Lumkes hasn’t opined that
`
`the Accused Machines perform these functions only under two conditions. (See D.I. 226
`
`at Nos. 83-84.) Accordingly, there’s a genuine dispute of material fact for the jury to
`
`resolve.
`
`5.
`
`‘474 and ‘788 Patents
`
`Wirtgen’s expert testimony precludes summary judgment on the ‘474 and ‘788
`
`Patents. The ‘474 Patent is a continuation of the ‘788 Patent. Both Patents share claim
`
`language that requires “a plurality of indication and setting devices[,]” with “each
`
`indication and setting device being operable to indicate the current actual value.” (See
`
`D.I. 226-1 at 8:61-65; D.I. 226-2 at 7:13-18.) The Accused Machines have multiple
`
`displays: two at the operator’s station and one ground display on either side of the
`
`machine. Wirtgen’s expert, Dr. Rahn, opines that these displays meet the Claim’s
`
`“plurality of ... devices” requirement. Dr. Rahn has also opined that each of those
`
`
`
`15
`
`

`

`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 16 of 26 PageID #: 29516
`
`displays can indicate the current actual value of each operating parameter. (See, e.g., D.I.
`
`226-17 ¶¶ 312, 325; id. at Appx. D.1.2 p. 42). That’s enough to create a factual dispute
`
`about infringement.
`
`6.
`
`‘618 Patent
`
`Claims 1 and 8 of Caterpillar’s ‘618 Patent recite “a water reservoir mounted on the
`
`frame and configured to enclose water.” (D.I. 230-7 at 9:36-37; id. at 12:8.) Unlike the other
`
`Patents discussed, Caterpillar, not Wirtgen, would have the burden of proving
`
`infringement of this Patent at trial. I construe the phrase “mounted on” consistent with its
`
`ordinary and accustomed meaning. The intrinsic record does little to illuminate the
`
`meaning of this phrase, so the Parties cite opposing extrinsic evidence. See Phillips, 415
`
`F.3d at 1317 (citing dictionaries and expert testimony as examples of extrinsic evidence).
`
`Caterpillar consults an expert, Dr. Sorini, who proffers that “mounted on” means “at the
`
`top of” to a person of ordinary skill in the art. Wirtgen uses a dictionary definition to insist
`
`that the phrase requires one component that is attached to a support. I am left “with the
`
`considerable task of filtering the useful extrinsic evidence from the fluff.” Id. at 1318.
`
`I won’t follow Dr. Sorini’s interpretation because it reads out the word “mounted”
`
`from the claim. Dr. Sorini puts so much emphasis on the word “on” that he renders
`
`“mounted” superfluous. That contravenes the understood principle that claims must be
`
`“interpreted with an eye toward giving effect to all terms in the claim.” Becton, Dickinson
`
`& Co., 616 F.3d at 1257 (citations omitted). While I am mindful of the pitfalls that can
`
`
`
`16
`
`

`

`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 17 of 26 PageID #: 29517
`
`occur from relying on a general dictionary in construing a claim, I find that Wirtgen’s
`
`interpretation doesn’t “extend patent protection beyond what should properly be
`
`afforded.” Phillips, 415 F.3d at 1322. Instead, it permissibly applies the “widely accepted
`
`meaning of commonly understood words” to the claim language. Id. at 1314.
`
`Wirtgen’s water reservoir is made from a void in the frame, so the reservoir isn’t
`
`mounted on the frame; it’s part of the frame. Therefore, there’s no infringement. Even
`
`though the reservoir is created by welding pieces of metal together, and sits towards the
`
`top of the frame, it is created by the frame’s weldments.
`
`7. Willfulness
`
`“[T]he concept of ‘willfulness’ requires a jury to find no more than deliberate or
`
`intentional infringement.” Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d
`
`1367, 1378 (Fed. Cir. 2020). The accused infringer’s “culpability is generally measured
`
`against the knowledge of the actor at the time of the challenged conduct.” Halo Elecs.,
`
`Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016). A jury should resolve factual questions
`
`pertaining to the willfulness determination. See WBIP, LLC v. Kohler Co., 829 F.3d 1317,
`
`1341 (Fed. Cir. 2016); see also Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod.
`
`Grp., LLC, 879 F.3d 1332, 1353 (Fed. Cir. 2018).
`
`Wirtgen offers facts that, when credited, could establish willfulness. For example,
`
`by Wirtgen’s telling, Caterpillar tracked, dissected, and copied patented features of
`
`Wirtgen’s machines. From Caterpillar’s point of view, that’s just standard industry
`
`
`
`17
`
`

`

`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 18 of 26 PageID #: 29518
`
`practice. But whether those facts rise to the level of “deliberate or intentional”
`
`infringement is a question for the jury. See WBIP, LLC, 829 F.3d at 1341.
`
`Because intentional infringement can arise from post-suit conduct, the jury will
`
`likewise decide if Caterpillar willfully infringed on the ‘268 and ‘530 Patents. Willfulness
`
`requires knowledge of the patents-in-suit, and Caterpillar argues that it gleaned this
`
`knowledge from the Initial or Amended Complaints. I have previously held that the
`
`requisite knowledge of the patent-in-suit can’t be based only on the complaint in a case.
`
`See Pact XPP Schweiz AG v. Intel Corp., No. 1:19-CV-01006-JDW, 2023 WL 2631503, at
`
`*5 (D. Del. Mar. 24, 2023), reconsideration denied, No. 1:19-CV-01006-JDW, 2023 WL
`
`3934058 (D. Del. June 9, 2023) (citing Bos. Sci. Corp. v. Nevro Corp., 560 F. Supp. 3d 837,
`
`845 (D. Del. 2021)). So, if Caterpillar’s contention were undisputed, maybe that would be
`
`enough. But, by Wirtgen’s telling, Caterpillar knew of the ‘530 Patent from an alert sent
`
`ten days before the Complaint was filed and the ‘268 Patent from a Notice of
`
`Infringement dated a week before the Amended Complaint.
`
`Caterpillar counters that because it didn’t know of the infringement allegations
`
`until just before Wirtgen sued, there’s no way for a jury to find willful infringement. But
`
`post-suit conduct may give rise to a finding of willfulness. See Apple Inc. v. Samsung
`
`Elecs. Co., 258 F. Supp. 3d 1013, 1027 (N.D. Cal. 2017); see also Mentor Graphics Corp. v.
`
`EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017). Wirtgen contends that Caterpillar
`
`“chose to continue to manufacture, import, and sell” the machines “after having been
`
`
`
`18
`
`

`

`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 19 of 26 PageID #: 29519
`
`found to infringe the ‘530 Patent” during the ITC proceedings. (See D.I. 226 at No. 116.)
`
`After Wirtgen filed its Amended Complaint, Caterpillar “continued to design,
`
`manufacture, and sell the accused machines” that infringed on the ‘268 Patent. (See D.I.
`
`226 at No. 115.) A jury could find willfulness on these grounds. See Eko Brands, LLC, 946
`
`F.3d at 1378.
`
`B.
`
`Invalidity
`
`1.
`
`Claim broadening of the ‘268 Patent
`
`Wirtgen’s ‘268 Patent is a reissue of its ‘659 Patent. The ‘268 Patent amended
`
`various portions of the ‘659 Patent. Caterpillar argues that changes to Claim 1
`
`improperly broadened the patent.5 Claim 1 of the original patent included: “supporting
`
`the subset of the components from the machine frame with a second spring stiffness,
`
`the second spring stiffness being relatively higher than the first spring stiffness.”
`
`(D.I. 226-9 at 6:38-41.) The reissued patent amended this Claim with an addition and a
`
`deletion as follows: “supporting the subset of the components from the machine
`
`frame in a rigid manner or with a second spring stiffness, the second spring
`
`stiffness being relatively higher than the first spring stiffness." (D.I. 226-6 at 7:34-37.) I
`
`previously construed “spring stiffness” as “resistance to deformation.” (D.I. 168 at 2.)
`
`Claim 23 is a method claim based on Claim 1 with the same at-issue language.
`
`
`5 Wirtgen seeks summary judgment that the ‘268 Patent didn’t introduce new matter
`from the original ‘659 Patent, but Caterpillar says it’s not making such an argument, so
`there’s no dispute to resolve.
`
`
`
`19
`
`

`

`Case 1:17-cv-00770-JDW Document 272 Filed 01/04/24 Page 20 of 26 PageID #: 29520
`
`A patent holder may seek reissue of an existing patent. See 35 U.S.C. § 251. The
`
`reissue procedure “allows a patentee to broaden the scope of an existing patent to
`
`include subject matter that had been erroneously excluded from that patent.” Yoon Ja
`
`Kim v. ConAgra Foods, In

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