Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 1 of 6 PageID #: 30620
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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
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`ORDER
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`AND NOW, this 7th day of February, 2024, it is ORDERED as follows.
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`1.
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`Plaintiff Wirtgen America, Inc.’s Motions in Limine (D.I. 287) are GRANTED IN
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`PART and DENIED IN PART.
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`a.
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`The Federal Circuit applies regional circuit law to procedural questions
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`that are not themselves substantive patent law issues so long as they do not (A) pertain to
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`patent law, (B) bear an essential relationship to matters committed to the Federal Circuit’s
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`exclusive control by statute, or (C) clearly implicate the jurisprudential responsibilities of the
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`Federal Circuit in a field within its exclusive jurisdiction. See GFI, Inc. v. Franklin Corp., 265 F.3d
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`1268, 1272 (Fed. Cir. 2001). Therefore, I apply Third Circuit law with respect to motions to
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`exclude evidence in patent cases.
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`b.
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`Wirtgen’s first five Motions ask me to exclude theories, expert opinions,
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`or evidence that Caterpillar hasn’t previously or properly disclosed. However, as I detail below,
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
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`
`CATERPILLAR, INC.,
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`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`Case No. 1:17-cv-00770-JDW
`
`
`
`
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`
`
`
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`ORDER
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`AND NOW, this 7th day of February, 2024, it is ORDERED as follows.
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`1.
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`Plaintiff Wirtgen America, Inc.’s Motions in Limine (D.I. 287) are GRANTED IN
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`PART and DENIED IN PART.
`
`a.
`
`The Federal Circuit applies regional circuit law to procedural questions
`
`that are not themselves substantive patent law issues so long as they do not (A) pertain to
`
`patent law, (B) bear an essential relationship to matters committed to the Federal Circuit’s
`
`exclusive control by statute, or (C) clearly implicate the jurisprudential responsibilities of the
`
`Federal Circuit in a field within its exclusive jurisdiction. See GFI, Inc. v. Franklin Corp., 265 F.3d
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`1268, 1272 (Fed. Cir. 2001). Therefore, I apply Third Circuit law with respect to motions to
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`exclude evidence in patent cases.
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`b.
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`Wirtgen’s first five Motions ask me to exclude theories, expert opinions,
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`or evidence that Caterpillar hasn’t previously or properly disclosed. However, as I detail below,
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`Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 2 of 6 PageID #: 30621
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`for most there’s been sufficient disclosure, so I won’t exclude the evidence at this time. To the
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`extent that Caterpillar goes beyond those disclosures at trial, Wirtgen is free to raise such an
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`objection then.
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`c.
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`Testimony Regarding Lifting Column Sensors:
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`i.
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`The Motion is DENIED to the extent it seeks to exclude fact
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`witness testimony like that of Eric Engelmann who has testified during discovery that, from
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`his point of view, the magnet and the sensor are separate components; and
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`ii.
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`The Motion is GRANTED to the extent that Dr. Rakow testifies
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`at trial that the magnet and the sensor are two separate components. While Caterpillar cites
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`a specific part of her expert report for the proposition that she has previously opined as such,
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`her rebuttal expert report doesn’t say what Caterpillar says it does. I will limit her testimony
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`to what she disclosed in her expert report.
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`d.
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`Testimony Regarding 4-Sided Stability Pattern: The Motion is
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`DENIED to the extent that it seeks to bar all testimony that Caterpillar’s 4-sided stability
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`pattern doesn’t infringe the ‘309 Patent. If there’s the proper foundation for a Caterpillar fact
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`witness to testify about Caterpillar’s stability pattern, that witness may do so. However, if a
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`fact witness exceeds the scope of fact witness testimony and offers an undisclosed expert
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`opinion on what Caterpillar’s machines do and don’t practice, Wirtgen may raise an objection
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`at trial.
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`2
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`Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 3 of 6 PageID #: 30622
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`e.
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`2014 Hypothetical Negotiation Date: The Motion is DENIED to the
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`extent that it seeks to preclude Caterpillar from arguing that the first alleged infringement
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`occurred before 2016 and from offering expert witness testimony that applies a 2014
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`hypothetical negotiation date. Though that date may not have been disclosed in certain
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`interrogatory responses, Caterpillar gave ample notice of the relevance of the 2014
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`timeframe. That date appeared in a timely disclosed expert report and Wirtgen had the
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`opportunity to cross-examine that expert during his deposition, so there’s no prejudice.
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`f.
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`Non-infringement Arguments for the ‘972 Patent: The Motion is
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`DENIED subject to renewal at trial. The premise of Wirtgen’s Motion is that Caterpillar’s
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`expert will go beyond his expert report. Caterpillar assures Wirtgen that its expert won’t do
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`so. If Caterpillar reneges on its representation, Wirtgen may object at trial. I note that although
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`Wirtgen says that I adopted a particular construction of the term “only when” in resolving
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`summary judgment, that isn’t true. While I rejected Caterpillar’s overly narrow construction
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`of the term, I didn’t hold that Wirtgen’s construction was indeed correct. Wirtgen should take
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`care to ensure that its trial presentation doesn’t oversell my ruling on summary judgment.
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`g.
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`Theories Disclosed During Pre-Trial Order Exchange:
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`i.
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`The Motion is DENIED to the extent that it seeks to bar
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`Caterpillar from arguing that Wirtgen is collaterally estopped from arguing infringement
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`with regards to claims 10 and 29 of the ‘309 Patent. Because Caterpillar disclosed this
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`affirmative defense to Wirtgen in its First Amended Answer and supplemental responses
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`3
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`Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 4 of 6 PageID #: 30623
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`to interrogatories, this isn’t a “new” or untimely disclosed theory that Caterpillar is offering
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`for the first time at trial; and
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`ii.
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`The Motion is DENIED AS MOOT to the extent that it seeks
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`to prevent Caterpillar from arguing that Wirtgen’s infringement claims for the ‘530 Patent
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`are barred under the intervening rights doctrine. Based on Caterpillar’s representations in
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`its responsive brief, Caterpillar won’t assert that defense.
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`h.
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`My Policies And Procedures limit all parties to five motions in limine
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`absent leave of court. Wirtgen didn’t seek leave to file the seven additional motions that
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`it did. It doesn’t matter that Wirtgen folded them into one omnibus motion or shoehorned
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`them under common headings. Wirtgen has nonetheless raised twelve separate grounds,
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`which violates the spirit and purpose of my Procedures. Accordingly, the final seven
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`motions are DENIED WITHOUT PREJUDICE. To the extent that these issues resurface
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`during trial, I will allow Wirtgen to object then.
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`2. Defendant Caterpillar, Inc.’s Motions in Limine (D.I. 288) are DENIED.
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`a. Wirtgen GmBH: The Motion is DENIED to the extent that it seeks to
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`bar all evidence relating to Wirtgen GmBH. There is little risk that the jury will confuse Wirtgen
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`America with Wirtgen GmBH, given the roles of the two entities, their names, and how the
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`Parties will no doubt contextualize them at trial. Because it’s unlikely that the jury would
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`conflate the two, exclusion is inappropriate under Rule 403. Relatedly, should Wirtgen violate
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`4
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`Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 5 of 6 PageID #: 30624
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`its stipulation with Caterpillar regarding the scope of Dr. Hahn’s testimony, Caterpillar may
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`raise that issue then.
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`b.
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`ITC-Related Evidence:
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`i.
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`The Motion is DENIED AS MOOT to the extent that it seeks to
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`bar Wirtgen from using the ITC’s written determinations and orders because Wirtgen
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`responds that it won’t do so;
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`ii.
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` The Motion is DENIED to the extent that it seeks to prevent the
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`jurors from learning that a specific piece of evidence came from the ITC proceedings. The ITC
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`proceeding bears on some of the same patents and claims in this case. As the Parties
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`acknowledge, the ITC proceeding might be relevant. Stripping the evidence of its context is
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`unnecessary and confusing and won’t dispel any potential prejudice to Caterpillar; and
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`iii.
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`The Motion is DENIED to the extent that Wirtgen wants to limit
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`references to the ITC proceeding generally. I read this section of Wirtgen’s Motion as seeking
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`a stipulation with Caterpillar regarding such evidence. Wirtgen is free to seek such a
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`stipulation, but that’s not something I need to address in this order.
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`c.
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`Tip-Over Allegations: The Motion is DENIED to the extent that it seeks
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`to exclude any allegations of “tip-over” events. The tip-over events may be relevant to
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`Wirtgen’s presentation of infringement, willfulness, and damages. For example, evidence
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`of those events and Caterpillar’s knowledge of them may go to show the value of
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`Wirtgen’s patented inventions that sought to prevent such incidents. Wirtgen must lay a
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`5
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`Case 1:17-cv-00770-JDW Document 319 Filed 02/07/24 Page 6 of 6 PageID #: 30625
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`proper foundation to show that evidence and to the extent it doesn’t do so, Caterpillar
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`may raise such an objection at that time.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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`6
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