Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 1 of 32 PageID #: 34484
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim
`Defendant,
`v.
`
`CATERPILLAR INC.
`
`Defendant/Counterclaim
`Plaintiff.
`
`
`
`
`
`
`C.A. No. 17-770-JDW
`
`
`
`WIRTGEN AMERICA, INC.’S OPENING BRIEF IN SUPPORT OF ITS
`MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO FEDERAL
`RULE OF CIVIL PROCEDURE 50(b) OR, IN THE ALTERNATIVE, A NEW TRIAL
`PRUSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 59
`
`
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 2 of 32 PageID #: 34485
`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`
`Attorneys for Plaintiff Wirtgen America, Inc.
`
`Dated: May 10, 2024
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
`
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`William H. Milliken
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`wmilliken@sternekessler.com
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 3 of 32 PageID #: 34486
`
`TABLE OF CONTENTS
`
`NATURE AND STAGE OF PROCEEDINGS .................................................................. 1
`SUMMARY OF THE ARGUMENT ................................................................................. 1
`STATEMENT OF FACTS ................................................................................................. 4
`A.
`The ’268 patent ....................................................................................................... 4
`B.
`Accused products .................................................................................................... 7
`LEGAL STANDARD ......................................................................................................... 8
`ARGUMENT ...................................................................................................................... 8
`A.
`The Court should grant JMOL of infringement because the evidence
`conclusively established that Caterpillar’s large milling machines and
`rotary mixers infringe claim 32 of the ’268 patent. ................................................ 8
`1.
`Undisputed evidence showed that the drive engine in Caterpillar’s
`machines is attached to the machine frame. .................................................9
`Undisputed evidence showed that the output axis of the engines
`in Caterpillar’s machines “is aligned with an input axis of the
`hydraulic pump drive and … drive pulley prior to engine
`operation.” ..................................................................................................13
`Undisputed evidence showed that the articulated coupling in
`Caterpillar’s drive train “accommodates a lack of alignment
`between the output axis of the drive engine and input axes of the
`hydraulic pump drive and the drive pulley” during operation. ..................16
`The Court should grant JMOL of no invalidity because no reasonable
`jury could have found claim 32 invalid based on the PM465 machine
`and Braud. ............................................................................................................. 20
`1.
`Dr. Klopp’s obviousness analysis considered the wrong claim
`language. ....................................................................................................20
`Caterpillar presented no evidence that a skilled artisan would be
`motivated to incorporated a torsionally flexible elastomeric
`coupling in the PM465-Braud combination. ..............................................21
`In the alternative, the Court should grant a new trial with respect to
`infringement and invalidity of claim 32. ............................................................... 25
`CONCLUSION ................................................................................................................. 25
`
`2.
`
`3.
`
`2.
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`
`
`
`
`
`B.
`
`C.
`
`
`
`i
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 4 of 32 PageID #: 34487
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Cordis Corp. v Boston Scientific Corp.,
`658 F.3d 1347 (Fed. Cir. 2011)................................................................................................21
`
`Fireman’s Fund Ins. Co. v. Videfreeze Corp.,
`540 F.2d 1171 (3d Cir. 1976).....................................................................................................8
`
`HSM Portfolio LLC v. Elpida Memory Inc.,
`160 F. Supp. 3d 708 (D. Del. 2016) .........................................................................................20
`
`Intellectual Ventures I LLC v. Motorola Mobility LLC,
`870 F.3d 1320 (Fed. Cir. 2017)................................................................................................16
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014)....................................................................................23, 24, 25
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................................21, 22
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)..................................................................................................12
`
`Lightning Lube, Inc. v. Witco Corp.,
`4 F.3d 1153 (3d Cir. 1993)...................................................................................................8, 20
`
`Moba, B.V. v. Diamond Automation, Inc.,
`325 F.3d 1306 (Fed. Cir. 2003)......................................................................................2, 12, 13
`
`Mycogen Plant Sci. v. Monsanto Co.,
`243 F.3d 1316 (Fed. Cir. 2001)................................................................................................16
`
`OSI Pharms., LLC v. Apotex Inc.,
`939 F.3d 1375 (Fed. Cir. 2019)............................................................................................3, 16
`
`Pannu v. Iolab Corp.,
`155 F.3d 1344 (Fed. Cir. 1998)..................................................................................................8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)................................................................................11
`
`Roebuck v. Drexel Univ.,
`852 F.2d 715 (3d Cir. 1988).....................................................................................................25
`
`ii
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 5 of 32 PageID #: 34488
`
`United States v. Gilead Scis., Inc.,
`C.A. No. 19-2103-MN, 2024 WL 1251282 (D. Del. Mar. 22, 2024) ..............................8, 9, 11
`
`Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc.,
`97 F.4th 882 (Fed. Cir. 2024) ........................................................................................4, 23, 24
`
`Williamson v. Consol. Rail Corp.,
`926 F.2d 1344 (3d Cir. 1991)...............................................................................................8, 25
`
`Other Authorities
`
`Fed. R. Civ. P. 50 .........................................................................................................................1, 8
`
`Fed. R. Civ. P. 59 .........................................................................................................................1, 8
`
`
`
`
`
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 6 of 32 PageID #: 34489
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`Wirtgen moves under Rule 50(b) for judgment as a matter of law that Caterpillar’s PM600
`
`and PM800 milling machines and RM600 and RM800 rotary mixers infringe claim 32 of U.S.
`
`Patent No. RE48,268 (the “’268 patent”) and that claim 32 is not invalid. In the alternative, Wirtgen
`
`moves under Rule 59 for a new trial on infringement and invalidity of claim 32.
`
`I.
`
`NATURE AND STAGE OF PROCEEDINGS
`
`Wirtgen and Caterpillar tried this case to a jury in February 2024. The jury found that
`
`Caterpillar had willfully infringed claims of five Wirtgen patents and that those patents were not
`
`invalid. D.I. 346 at 3–9. The jury found Wirtgen’s sixth asserted patent, the ’268 patent, not
`
`infringed and invalid as obvious. Id. at 11.
`
`Wirtgen timely moved under Rule 50(a) for judgment as a matter of law of infringement
`
`and no invalidity of claim 32 of the ’268 patent. Tr. 1925:5–15, 1938:10–1947:16. The Court
`
`denied those motions, see Tr. 1947:3–12, and Wirtgen now renews them pursuant to Rule 50(b).
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`Claim 32 of the ’268 patent covers a construction machine with a drive train that includes
`
`two subsets of components connected by a torsionally flexible elastomeric coupling. The first
`
`subset of components, which includes the drive engine, is attached to the machine frame “with a
`
`lower spring stiffness” (which reduces the transmission of vibration from the engine to the frame).
`
`The second subset, which includes the pump drive, clutch, and drive pulley, is attached to the
`
`machine frame “with a higher spring stiffness.” The drive engine’s output axis must be aligned
`
`with the input axes of the pump drive and drive pulley before the machine begins operating, and
`
`the coupling between the two subsets must be able to “accommodate[] a lack of alignment”
`
`between those axes during operation.
`
`A.
`
`Caterpillar contested infringement of only three elements of this claim: (1) the
`
`element requiring that the drive engine is attached to the machine frame (the “attachment
`
`1
`
`

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`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 7 of 32 PageID #: 34490
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`element”); (2) the element requiring alignment between the two subsets of components before
`
`operation (the “alignment element”); and (3) the element requiring that the coupling between the
`
`two subsets be able to accommodate a lack of alignment during operation (the “accommodation
`
`element”). But undisputed evidence shows that Caterpillar’s machines meet all three elements.
`
`Caterpillar’s arguments otherwise rest on transparently reading limitations into the claims or else
`
`on rank speculation unsupported by any evidence. JMOL of infringement is appropriate.
`
`1.
`
`The drive engine of the accused machines is undisputedly attached to the machine
`
`frame. Caterpillar’s expert Dr. Klopp admitted this. Dr. Klopp maintained that Caterpillar does not
`
`infringe the attachment element because the drive engine in Caterpillar’s machines is mounted to
`
`the machine frame only at one end (it is mounted to the pump drive at the other end). Tr. 1101:24–
`
`1103:11, 1104:21–1105:13. But nothing in claim 32 requires that the drive engine be uniformly
`
`attached to the machine frame, or that the drive engine be attached to the machine frame on both
`
`ends. Dr. Klopp’s non-infringement argument “import[s] an additional limitation into the claim[]”
`
`and therefore cannot support the jury’s verdict. See Moba, B.V. v. Diamond Automation, Inc., 325
`
`F.3d 1306, 1313–14 (Fed. Cir. 2003) (reversing jury verdict of non-infringement).
`
`2.
`
`Caterpillar’s lead powertrain engineer testified, and Caterpillar’s own documents
`
`confirm, that the accused machines satisfy the alignment element. And Caterpillar offered no
`
`contrary evidence. Dr. Klopp merely speculated that it was possible that the documents were wrong
`
`because Dr. Rahn “made no measurements.” Tr. 1105:24. But Dr. Rahn did not have to make any
`
`measurements. The assembly instructions for the relevant components show that the drive engine’s
`
`output axis is aligned with the input axes of the pump drive and drive pulley when those
`
`components are assembled, and Caterpillar’s own witness admitted that the documents reflect the
`
`configuration of the actual Caterpillar machines. No more was required to meet Wirtgen’s burden
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 8 of 32 PageID #: 34491
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`of proof. And Dr. Klopp’s unsupported speculation that the alignment element somehow, for some
`
`unspecified reason, might not be met is not sufficient to support a jury finding of non-infringement.
`
`Cf. OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1382 (Fed. Cir. 2019) (“Mere speculation is
`
`not substantial evidence.”) (cleaned up).
`
`3.
`
`Caterpillar’s own documents likewise show that the accommodation element is
`
`satisfied. The relevant assembly instructions specify that there is a “Max. permissible offset
`
`[between the drive engine and pump drive] during operation” of ± 2.5 mm in the axial direction,
`
`± 1.5 mm in the radial direction, and 0.1 degrees in the angular direction. Ex. 0037.0017. That
`
`shows beyond doubt that the articulated coupling “permi[ts]”—i.e., accommodates—a lack of
`
`alignment up to those specified tolerances during operation.
`
`Caterpillar’s contention otherwise once again depends on adding an unsupported limitation
`
`to the claim. Caterpillar argued to the jury that the accommodation element requires evidence that
`
`the drive train has exceeded the maximum permissible offset at some point during operation—in
`
`other words, evidence that the machine was operated in a manner that would break the coupling.
`
`That interpretation directly contradicts this Court’s ruling that “[t]he claim covers the smallest
`
`misalignment” up to misalignment severe enough to break the machine. D.I. 167 at 10. It also
`
`makes no sense. The claim requires accommodating a “lack of alignment”; it does not require such
`
`extreme lack of alignment as to risk rendering the whole drive train inoperable. Caterpillar’s
`
`interpretation would effectively require the drive train to “accommodate” more misalignment than
`
`the drive train is designed to accommodate—a contradiction in terms. Based on the claim language
`
`as the patentee wrote it and the Court construed it, there can be no dispute that Caterpillar infringes.
`
`
`
`B.
`
`Caterpillar did not adduce sufficient evidence to allow a reasonable jury to find by
`
`clear and convincing evidence that claim 32 is invalid.
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 9 of 32 PageID #: 34492
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`1.
`
`Caterpillar presented its obviousness case through the testimony of Dr. Klopp. But
`
`Dr. Klopp did not analyze the actual reissued claim language when conducting his obviousness
`
`analysis. Instead, Dr. Klopp analyzed the language of the original claim, which is materially
`
`broader than the claim as reissued. Dr. Klopp therefore necessarily did not show that the narrower
`
`reissue claim would have been obvious over the prior art.
`
`2.
`
`Claim 32 requires a torsionally flexible elastomeric coupling between the
`
`machine’s engine and the rest of its drive train. Caterpillar argued that the claim would have been
`
`obvious over two prior-art references: Caterpillar’s PM465 milling machine and a prior-art patent
`
`called Braud. But Dr. Klopp admitted that neither the PM465 nor Braud includes a torsionally
`
`flexible elastomeric coupling—indeed, there is no prior-art reference in the record that discloses
`
`such a coupling. Dr. Klopp attempted to fill this gap by asserting that torsionally flexible couplings
`
`were known in the art, but he stopped there. He did not explain why a skilled artisan would have
`
`wanted to modify the PM465-Braud combination to include one. Nor did Caterpillar present any
`
`other evidence of a motivation to combine a torsionally flexible elastomeric coupling with the
`
`PM465 and Braud. Given Caterpillar’s failure to provide any motivation for combining the prior
`
`art to arrive at the claimed invention, there is no evidence—let alone “clear and convincing”
`
`evidence—that claim 32 would have been obvious. See Virtek Vision Int’l ULC v. Assembly
`
`Guidance Sys., Inc., 97 F.4th 882, 887–88 (Fed. Cir. 2024) (assertion that all claim elements were
`
`known in the art is legally insufficient to “satisf[y] the motivation to combine analysis” because
`
`“[a] reason for combining must exist”). The Court should grant JMOL that claim 32 is not invalid.
`
`III.
`
`STATEMENT OF FACTS
`
`The ’268 patent
`
`A.
`The ’268 patent describes how to arrange and mount a drive train on a frame of a
`
`construction machine, such as a milling machine or a rotary mixer, to reduce vibration. Tr. 823:9–
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 10 of 32 PageID #: 34493
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`15; Ex. 0007, Abstract. In one example, shown in Figure 1 of the patent, the drive train components
`
`include a drive engine, a hydraulic pump drive, a clutch, and a traction drive mechanism, which
`
`power a working drum. Tr. 824:7–21; Ex. 0007, Fig. 1, 1:31–41, 4:24–54.
`
`
`
`Ex. 0007, Fig. 1 (annotated). The traction drive is a belt-and-pulley system for transmitting power
`
`from the clutch to the working drum. Its components include a belt that connects a drive pulley to
`
`a driven pulley to rotate the working drum. Damping elements, such as rubber mounts (blue),
`
`support a first group (or “subset”) of drive train components (green) on the frame with a low spring
`
`stiffness, while a second subset of components (red) are mounted to the frame rigidly or with a
`
`high spring stiffness. Id., 5:7–25. An articulated coupling (yellow) connects the output of the drive
`
`engine in the first subset to the input of the remaining drive train components in the second subset.
`
`Tr. 824:22–825:21; Ex. 0007, 2:8–43. The articulated coupling accommodates the dynamic
`
`misalignment that occurs when the machine is operating without significantly affecting the power
`
`flow through the drive train. Tr. 824:22–825:21; Ex. 0007, 1:45–50, 5:17–25.
`
`Because this arrangement of components “isolates” the drive engine from the machine
`
`frame and the rest of the drive train—thereby reducing the amount of vibration that propagates
`
`from the drive engine to those other components—it is sometimes referred to as “isolation
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 11 of 32 PageID #: 34494
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`mounting” or “iso-mounting.” Tr. 371:10–14 (Engelmann); Tr. 825:12–21, 832:12–15 (Rahn).
`
`
`
`Asserted claim 32 depends from independent claim 14. Ex. 0007, 10:54–60. Claim 14
`
`covers a construction machine with a machine frame, a working drum, and a drive train arranged
`
`into a first subset connected to a second subset by an articulated coupling. Id., 9:1–18. The first
`
`subset includes the engine and is “attached to the machine frame elastically with a lower spring
`
`stiffness so that transmission of vibrations to the machine frame is reduced.” Id., 9:19–32. The
`
`second subset includes the hydraulic pump drive, clutch, and drive pulley and is “attached to the
`
`machine frame with a higher spring stiffness or in a rigid manner.” Id., 9:19–32. The engine “has
`
`an output axis aligned with an input axis of the hydraulic pump drive and … input axis of the drive
`
`pulley prior to operation of the construction machine.” Id., 9:35–38. The “articulated coupling
`
`accommodates a lack of alignment between the output axis of the drive engine and the input axes
`
`of the hydraulic pump drive and the drive pulley due to dynamic movement of the first subset
`
`relative to the second subset during operation of the construction machine.” Id., 9:39–44. Claim
`
`32, in turn, requires an “articulated coupling [that] is torsionally flexible and includes an
`
`elastomeric coupling.” Id., 10:54–60.
`
`
`
`The full claim language is reproduced below, with relevant terms emphasized:
`
`14. A construction machine, comprising:
`a machine frame carried by a chassis;
`a working drum;
`a drive train including at least the following elements:
`
`a drive engine;
`a traction drive assembly for mechanically driving the
`working drum, the traction drive assembly including a
`drive pulley, a driven pulley, and a drive belt connecting
`the pulleys;
`a clutch for switching a torque between the drive engine and
`the working drum; and
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 12 of 32 PageID #: 34495
`
`a hydraulic pump drive; and
`wherein the elements of the drive train are divided into at least a first
`subset and a second subset; and
`wherein the drive train further includes an articulated coupling
`connecting the first subset to the second subset; and
`wherein the first subset includes at least the drive engine; and
`wherein the second subset includes:
`the hydraulic pump drive;
`the clutch; and
`the drive pulley of the traction drive assembly; and
`[the “attachment element”] wherein the first subset is attached to the
`machine frame elastically with a lower spring stiffness so that
`transmission of vibrations to the machine frame is reduced, and the
`second subset is attached to the machine frame with a higher spring
`stiffness or in a rigid manner;
`wherein the clutch is connected between the hydraulic pump drive
`and the drive pulley;
`[the “alignment element”] wherein the drive engine has an output
`axis aligned with an input axis of the hydraulic pump drive and with
`an input axis of the drive pulley prior to operation of the
`construction machine; and
`[the “accommodation element”] wherein the articulated coupling
`accommodates a lack of alignment between the output axis of the
`drive engine and the input axes of the hydraulic pump drive and the
`drive pulley due to dynamic movement of the first subset relative to
`the second subset during operation of the construction machine.
`32. The construction machine of claim 14, wherein:
`the articulated coupling is torsionally flexible and includes an
`elastomeric coupling; and
`the hydraulic pump drive, the clutch, and the drive pulley are jointly
`supported as a combined subset entity, and the combined subset
`entity is rigidly attached to the machine frame.
`
`Accused products
`
`B.
`Wirtgen accused Caterpillar’s PM620, PM622, PM820, PM822, and PM825 large milling
`
`machines and Caterpillar’s RM600 and RM800 rotary mixers of infringing claim 32. Tr. 798:25–
`
`799:10, 800:5–801:1. The parties agreed that the PM622 is representative of all Caterpillar large
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 13 of 32 PageID #: 34496
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`milling machines and that the RM800 is representative of all accused Caterpillar rotary mixers
`
`for purposes of infringement of claim 32. Tr. 669:16–670:23.
`
`IV.
`
`LEGAL STANDARD
`
`A court should grant judgment as a matter of law where “there is no legally sufficient
`
`evidentiary basis for a reasonable jury to find for [the non-moving] party.” Fed. R. Civ. P. 50(a)(1);
`
`see Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998). A grant of JMOL in favor of the
`
`party bearing the burden of proof on an issue is appropriate if “if there is insufficient evidence for
`
`permitting any different finding.” United States v. Gilead Scis., Inc., C.A. No. 19-2103-MN, 2024
`
`WL 1251282, at *2 (D. Del. Mar. 22, 2024) (quoting Fireman’s Fund Ins. Co. v. Videfreeze Corp.,
`
`540 F.2d 1171, 1177 (3d Cir. 1976)). A party that does not have the burden of proof is entitled to
`
`JMOL if, viewing the evidence in the light most favorable to the non-movant, “there is insufficient
`
`evidence from which a jury reasonably could find” that the non-movant carried its burden of proof.
`
`Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). “[A] scintilla of evidence is
`
`not enough to sustain a verdict” in favor of the party bearing the burden of proof. Id.
`
`A court may order a new trial “for any reason for which a new trial has heretofore been
`
`granted in an action at law in federal court.” Fed. R. Civ. P. 59(a); see also Fed. R. Civ. P. 50(b)(2).
`
`For example, a new trial is appropriate if the verdict is “against the weight of the evidence” and
`
`the court has “a fixed and firm impression that a serious mistake has been made.” Williamson v.
`
`Consol. Rail Corp., 926 F.2d 1344, 1352–53 (3d Cir. 1991).
`
`V.
`
`ARGUMENT
`
`A.
`
`The Court should grant JMOL of infringement because the evidence
`conclusively established that Caterpillar’s large milling machines and rotary
`mixers infringe claim 32 of the ’268 patent.
`
`At trial, Caterpillar disputed infringement of only three elements of claim 32: the
`
`attachment element, the alignment element, and the accommodation element. See Tr. 1101:24–
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 377 Filed 05/10/24 Page 14 of 32 PageID #: 34497
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`1108:17. But Wirtgen presented undisputed evidence that these limitations were satisfied, and
`
`Caterpillar’s contrary arguments rely on transparently adding limitations to the claims (in the case
`
`of the first and third disputed elements) and baseless speculation (in the case of the second disputed
`
`element). A jury applying the proper claim constructions to the evidence could only have reached
`
`a verdict of infringement. JMOL is therefore appropriate. See Gilead, 2024 WL 1251282, at *5
`
`(granting JMOL of direct infringement where plaintiff’s expert testimony on direct infringement
`
`was “essentially unrebutted”).
`
`1.
`
`Undisputed evidence showed that the drive engine in Caterpillar’s
`machines is attached to the machine frame.
`
`Wirtgen established at trial that Caterpillar’s machines include a drive train with a first
`
`subset of components attached to the machine frame, as required by claim 32. Caterpillar presented
`
`no evidence supporting a different conclusion.
`
`Wirtgen’s expert Dr. Rahn explained, relying on Caterpillar’s own parts manual (Ex.
`
`0677A) and product brochure (Ex. 0739), that each accused machine has a drive train that includes
`
`an engine, pump drive, clutch, and drive pulley. Tr. 831:1–14 (citing Ex. 0677A.0559); Tr. 832:12–
`
`15 (citing Ex. 0739.0006). He explained that pages 576 and 101 of Exhibit 0677A show an
`
`articulated coupling that connects the engine to the pump drive. Tr. 833:3–11. The articulated
`
`coupling separates these drive train components into a first subset including the engine and a
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`second subset including the pump drive, clutch, and drive pulley. Tr. 839:7–13. While the second
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`subset is bolted (i.e., rigidly attached) to the machine frame, the engine (the first subset) is “iso-
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`mounted to reduce noise and vibration” in the machine frame. Tr. 831:23–832:15, 832:16–833:2.
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`Specifically, Dr. Rahn explained that the engine is attached to the machine frame by rubber mounts,
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`which have a lower spring stiffness—that is, lower resistance to deformation—than the bolts
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`attaching the second subset to the machine frame. Tr. 839:16–840:19. In this way, “the engine can
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`kind of bounce around but the forces that are transmitted to the frame are smaller, that’s basically
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`saying that the engine is going to have a lot of vibration, the frame not so much.” Tr. 840:15–19.
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`Critically, as Dr. Rahn noted, claim 14 requires only that there is one attachment between
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`the engine and the frame: “the claim just requires that it be attached, it doesn’t say how many
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`attachments you need, you just need at least one attachment between the engine and the frame.”
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`Tr. 840:20–24. Each accused Caterpillar machine includes such an attachment: the engine is
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`attached to the machine frame by rubber mounts. Tr. 840:25–841:5 (Rahn).
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`There is no dispute on this point. Caterpillar’s expert Dr. Klopp displayed the following
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`annotated excerpts of parts manuals for the PM622 and RM800, which show rubber isolators (blue)
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`attaching the engine to the frame.
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`In this demonstrative, Dr. Klopp “highlight[ed] the vibration isolator … those relatively soft
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`mounts, actually they look like rubber donuts.” Tr. 1101:24–1102:7. Dr. Klopp acknowledged (on
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`direct examination, no less) that the mounts “that are low down”—that is, the mounts on the right
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`side of the PM622 figure and the left side of the RM800 figure—“are attached to the machine
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`frame.” Tr. 1101:24–1102:18; see also Tr. 1164:6–14 (acknowledging the same point on cross).
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`Thus, Dr. Klopp expressly conceded that each accused Caterpillar machine includes two vibration
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`isolators that attach the engine directly to the machine frame with a lower spring stiffness and
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`reduce the transmission of vibrations to the frame. That should be the end of the matter: no more
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`is required to satisfy the attachment element of claim 32. In other words, the undisputed
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`evidence—agreed to by both side’s experts—shows infringement. So there is “insufficient
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`evidence to support the jury’s finding” otherwise. Gilead, 2024 WL 1251282, at *5.
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`Dr. Klopp maintained that Caterpillar’s machines did not infringe this element because they
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`also include an additional pair of vibration isolators that attach the engine to the pump drive (the
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`pairs of mounts on the top of the annotated figures above). Tr. 1101:24–1103:11, 1104:21–1105:13.
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`This testimony, however, transparently reads into the claim a limitation that is not there. The claim
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`requires only a “construction machine, comprising” an engine “attached to the machine frame.” It
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`does not say that the engine must be attached only to the machine frame. Moreover, as the Court
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`explained to the jury, “[w]hen the word ‘comprising’ is used in a preamble, it means ‘including but
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`not limited to’”—meaning that, “if … an Accused Product includes all of the requirements of that
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`claim, then the claim is infringed …. even if the Accused Product contains additional elements.”
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`Tr. 2076:14–22 (emphasis added). Accordingly, because Caterpillar’s engines have a pair of rubber
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`mounts attaching the engine to the machine frame, they infringe; that they have a second pair of
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`rubber mounts attaching the engine to the pump drive is irrelevant.
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`Dr. Klopp suggested that it was proper to limit the claims to exclude additional mounting
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`of the engine because the patent specification and figures illustrate drive trains in which the engine
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`is uniformly mounted to the machine frame. Tr. 1102:19–1105:13. In so arguing, Dr. Klopp
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`committed “one of the cardinal sins of patent law—reading a limitation from the written
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`description into the claims.” Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en
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`banc). “Even when the specification describes only a single embodiment, the claims of the patent
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`will not be read restrictively unless the patentee has demonstrated a clear intention to limit the
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`claim scope using ‘words or expressions of manifest exclusion or restriction.’” Liebel-Flarsheim
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`Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citation omitted). There is nothing in the
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`’268 patent—not in the claims, not in the specification, not in the prosecution history—indicating
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`that the patentee meant for the attachment element to require anything more specific than what it
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`says on its face: attachment. Dr. Klopp’s cramped interpretation of the claims is therefore legally
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`incorrect and cannot serve as the basis for a jury finding of non-infringement.1
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`Indeed, the Court instructed the jury that it “should not compare the Accused Products to
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`any specific example set out in the Asserted Patents in reaching your decision.… The only correct
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`comparison is between Caterpillar’s Accused Products and the language of the claim itself.” Tr.
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`2082:14–19. Because the claim language requires only attachment—nothing more—a jury
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`following that instruction could only have found infringement of this element. Only by comparing
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`Caterpillar’s products to the patent’s exemplary embodiments—as Caterpillar improperly invited
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`the jury to do—could the jury have found non-infringement.
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`The Federal Circuit’s decision in Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306
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`(Fed. Cir. 2003), is instructive. A jury found that Diamond did not infringe a patent on a method
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`of egg processing that required three “guiding steps,” and the district court denied Moba’s motion
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`for JMOL. Id. at 1313. The district court reasoned that, while Diamond undisputedly performed
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`the three guiding steps, the jury r