Plaintiff/Counterclaim-Defendant,
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`v.
`
`
`
`
`
`
`C. A. No. 17-770-JDW
`
`
`
`Defendant/Counterclaim-Plaintiff.
`
`
`WIRTGEN AMERICA’S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF
`LAW REGARDING CATERPILLAR’S ESTOPPEL DEFENSES AND WIRTGEN’S
`CROSS MOTION TO STRIKE UNTIMELY NEW EXPERT OPINIONS
`
`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 1 of 26 PageID #: 34691
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 2 of 26 PageID #: 34692
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`PROPOSED FINDINGS OF FACT ................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Relevant procedural history of claim 29 of the ’309 patent.................................... 1
`
`Prosecution history and timing of the ’530 patent. ................................................. 5
`
`Prosecution history and timing of the ’268 patent. ................................................. 7
`
`Relevant procedural history of claim 5 of the ’788 patent...................................... 8
`
`The expert declarations of Drs. Klopp and Smith................................................. 10
`
`II.
`
`PROPOSED CONCLUSIONS OF LAW ......................................................................... 10
`
`A. Wirtgen is not judicially estopped from asserting claim 29 of the ’309
`patent. .................................................................................................................... 10
`
`B.
`
`C.
`
`D.
`
`E.
`
`There is no prosecution laches rendering the ’530 patent
`unenforceable. ....................................................................................................... 11
`
`There are no intervening rights for the ’268 patent. ............................................. 15
`
`There is no collateral estoppel against claim 5 of the ’788 patent. ....................... 16
`
`The expert declarations of Drs. Klopp and Smith are stricken as
`untimely and improper. ......................................................................................... 18
`
`III.
`
`CONCLUSION ................................................................................................................. 20
`
`
`
`
`
`
`ii
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 3 of 26 PageID #: 34693
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`In re Bogese,
`303 F.3d 1362 (Fed. Cir. 2002)................................................................................................14
`
`Comair Rotron, Inc. v. Nippon Densan Corp.,
`49 F.3d 1535 (Fed. Cir. 1995)..................................................................................................17
`
`Eberle v. Harris,
`2010 WL 6281563 (D.N.J. June 30, 2010) ..............................................................................15
`
`Elm 3DS Innov., LLC v. Samsung Elecs. Co., Ltd.,
`2021 WL 2070338 (D. Del. 2021) ..................... 11IOENGINE, LLC v. PayPal Holdings, Inc.,
`607 F. Supp. 3d 464 (D. Del. 2022) (Bryson, J.) .....................................................................17
`
`Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc.,
`458 F.3d 244 (3d Cir. 2006).....................................................................................................16
`
`John Bean Techs. Corp. v. Morris & Assocs., Inc.,
`988 F.3d 1334 (Fed. Cir. 2021)..........................................................................................15, 16
`
`Kingsdown Med. Consultants, Ltd. v. Hollister Inc.
`863 F.2d 867 (Fed. Cir. 1988)..................................................................................................13
`
`Konstantopoulos v. Westvaco Corp.,
`112 F.3d 710 (3d Cir. 1997).....................................................................................................19
`
`Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894 (3d Cir. 1977).....................................................................................................19
`
`Miller v. Bridgeport Brass Co.,
`104 U.S. 350 (1881) .................................................................................................................12
`
`Ohio Willow Wood v. Alps South, LLC,
`735 F.3d 1333 (Fed. Cir. 2013)................................................................................................17
`
`Reiffin v. Microsoft Corp.,
`270 F. Supp. 2d 1132 (N.D. Cal. 2003) ...................................................................................12
`
`Sonos Inc. v. Google LLC,
`2023 WL 6542320 ...................................................................................................................14
`
`TQ Delta, LLC v. 2Wire, Inc.,
`2021 WL 2671296 (D. Del. 2021) ...........................................................................................17
`
`United Therapeutics Corp. v. Liquidia Techs., Inc.,
`2022 WL 823521 (D. Del. 2022) .............................................................................................17
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 4 of 26 PageID #: 34694
`
`
`
`Statutes
`
`35 U.S.C. § 120 ................................................................................................................................5
`
`35 U.S.C. § 154(b) ...........................................................................................................................5
`
`35 U.S.C. § 252 ..............................................................................................................................15
`
`Other Authorities
`
`Federal Rule of Civil Procedure 37(c)(l) .......................................................................................18
`
`Federal Rule of Civil Procedure 26(a) ...........................................................................................18
`
`iv
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 5 of 26 PageID #: 34695
`
`
`
`I.
`
`PROPOSED FINDINGS OF FACT
`
`A.
`1.
`
`Relevant procedural history of claim 29 of the ’309 patent.
`
`Claim 29 of the ’309 patent depends from claim 26. Claim 26 requires a “road-
`
`building machine” with (i) four wheels or tracks, (ii) adjustable cylinders connecting each wheel
`
`or track to the machine frame, (iii) a working rotor, and (iv) hydraulic coupling lines connecting
`
`the adjustable cylinders in such a way that the left front wheel or track and the right rear wheel or
`
`track are adjusted in height in the same direction and in the opposite direction to the right front
`
`wheel or track and the left rear wheel or track. Ex. 0001.0018 (13:58–14:25).
`
`2.
`
`Claim 29 adds that the machine “has a four sided stability pattern having a widest
`
`transverse dimension, transverse to the forward direction of the chassis, which widest transverse
`
`dimension falls within a footprint of the working roller or rotor.” Ex. 0001.0018 (14:33–37).
`
`3.
`
`Claim 29 thus requires not only a four-sided stability pattern but also that the
`
`pattern be located in a specific place relative to the working rotor. Namely, the widest part of the
`
`pattern when looking at the machine from above (the line D–B in the figure below) must fall
`
`within the rotor footprint (labeled W in the figure below).
`
`Ex. 0001.0011.
`
`
`
`4.
`
`The claimed hydraulic coupling arrangement is intended to improve the stability
`
`of the machine when it traverses uneven terrain. Ex. 0001.0013 (3:1–4).
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 6 of 26 PageID #: 34696
`
`
`
`5.
`
`Caterpillar does not dispute that the machines the jury found to infringe have a
`
`four-sided stability pattern. See D.I. 219, Response to Statement of Undisputed Material Facts
`
`(“SUMF”) 108, 110.
`
`6.
`
`Caterpillar’s expert has admitted that Caterpillar’s machines satisfy the four-sided
`
`stability limitation. Kim Decl. Ex. A (Rakow Dep. 145:20–146:1).
`
`7.
`
`When Wirtgen moved for summary judgment of infringement of claim 29, D.I.
`
`212-4 at 78, Caterpillar did not argue that any factual or legal dispute (including estoppel)
`
`precluded Wirtgen from satisfying its burden of proof for the four-sided stability element. See
`
`D.I. 219, Response to SUMF 108, 110.
`
`8.
`
`Caterpillar did not raise judicial estoppel in its answer, in its interrogatory
`
`responses, or in the pretrial order.
`
`9.
`
`Prior to this motion, Caterpillar disputed only whether Wirtgen had shown that
`
`the four-sided stability pattern is in the location required by the claims. See id. at Response to
`
`SUMF 111 (arguing that “there is no evidence that the resulting four-sided stability pattern’s
`
`widest dimension transverse to the forward direction of the chassis falls within a footprint of the
`
`rotating milling drum”).
`
`10.
`
`The PTAB decision on which Caterpillar relies for its estoppel argument issued in
`
`2019, and the infringement theory that Caterpillar now asserts is inconsistent with that decision
`
`was disclosed years ago. See Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185, Final
`
`Written Decision (P.T.A.B. July 17, 2019); Kim Decl. Ex. J at 41–44.
`
`11.
`
`In the IPR challenging the ’309 patent, Caterpillar argued that claim 29 was
`
`rendered obvious by the combination of a road-milling machine (as disclosed in the Swisher
`
`reference) and a loading machine with positively coupled cylinders (as disclosed in the Neumeier
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 7 of 26 PageID #: 34697
`
`
`
`reference). Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185, Petition at 49 (P.T.A.B.
`
`Oct. 19, 2017).
`
`12.
`
`Neither cited reference mentions a four-sided stability pattern or its location.
`
`Neumeier does not disclose a rotor. Nevertheless, Caterpillar argued that incorporating
`
`Neumeier’s positively coupled cylinders into Swisher’s milling machine would have inherently
`
`resulted in a milling machine with a four-sided stability pattern in the location required by claim
`
`29. Id.
`
`13.
`
`Caterpillar asserted that the hypothetical Swisher-Neumeier machine would have
`
`a four-sided stability pattern with a widest transverse dimension “disposed about halfway
`
`between the front [caterpillars] . . . and the rear [caterpillars].” D.I. 369-1 at 48.
`
`14. Wirtgen disputed that Caterpillar had made the required showing for inherency
`
`because “the location of a stability pattern’s apex between two coupled cylinders is not
`
`inherent.” Id.
`
`15. Wirtgen argued to the PTAB that the ’309 patent specification “does not
`
`acknowledge the [pattern] is inherent,” and that Caterpillar failed to adduce evidence showing
`
`inherency. Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185, Patent Owner Response at
`
`47–48 (P.T.A.B. Aug. 21, 2018). The Board agreed. See D.I. 369-12 at 50 (finding that
`
`Caterpillar’s expert opinion testimony with respect to claim 29 was “unsupported by any facts or
`
`data” and “provide[d] no analysis”).
`
`16.
`
`The Board found that Caterpillar did not “establish that the stability pattern of the
`
`combined Swisher/Neumeier structure ‘falls within a footprint of the working roller or rotor.’”
`
`D.I. 369-12 at 53; see also id. at 53–54 (“The conclusion based on the evidence before us as to
`
`whether the four-sided stability pattern is inherent in the Swisher/Neumeier combination
`
`proposed by Petitioner, and whether the widest transverse direction of the pattern necessarily
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 8 of 26 PageID #: 34698
`
`
`
`falls within the milling drum’s footprint, is that the evidence is uncertain in an area where the
`
`law urges caution and clarity.”).
`
`17.
`
`The Board explained that, “[t]o meet the claim limitation there must be some
`
`evidence of the ‘footprint of the working roller,’ as recited in claim[] 29,” and that Caterpillar
`
`failed to present such evidence. Id.
`
`18.
`
`The Board found claim 29 not unpatentable over Caterpillar’s Swisher-Neumeier
`
`combination.
`
`19.
`
`At trial in this case, Wirtgen’s expert Dr. Lumkes testified that a machine
`
`configured with the ride-control feature of the accused products—where cylinders of equal value
`
`are interconnected and one has to move up when the adjacent ones move down—has a certain
`
`identifiable four-sided stability pattern. Tr. 595:14–22.
`
`20.
`
`Dr. Lumkes analyzed a detailed CAD model of Caterpillar’s machines to
`
`determine that the widest transverse dimension of that pattern would intersect the rotor. Tr.
`
`595:23–601:10; Ex. 391A.
`
`21.
`
`Dr. Lumkes also took measurements of the actual machines “to confirm that the
`
`dimensions that were on the CAD file” accurately reflected Caterpillar’s actual machines. Tr.
`
`601:11–17. He determined that Caterpillar’s machines therefore satisfied the limitations of claim
`
`29.
`
`22.
`
`23.
`
`There is no inconsistency in Wirtgen’s positions before the IPR and this Court.
`
`Furthermore, Caterpillar’s motion does not point to any evidence of bad faith or
`
`ill intent. Wirtgen did not change its position to gain any unfair advantage.
`
`24.
`
`The alleged harm of which Caterpillar complains—that Wirtgen’s expert was
`
`allowed to take inconsistent positions—would have been adequately redressed through cross-
`
`examination of Wirtgen’s expert before the jury.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 9 of 26 PageID #: 34699
`
`
`
`B.
`25.
`
`Prosecution history and timing of the ’530 patent.
`
`The ’530 patent issued about two years after its application was filed, and about
`
`eight years after the filing of the original application to which it claims priority.
`
`26.
`
`That overall timeline is not an unexplained gap in prosecution, nor is it an unusual
`
`pendency for a continuation application.
`
`27.
`
`Three Patent Term Adjustments pursuant to 35 U.S.C. § 154(b), totaling about
`
`three-and-a-half years, were granted across the ’530 patent family as a result of the Patent-Office
`
`delays. Ex. 4570.1255; Kim Decl. Ex. K.
`
`28.
`
`Specifically, the ’592 patent received 688 days of Patent Term Adjustment. Kim
`
`Decl. Ex. F at WA-0002553.
`
`29.
`
`The ’871 patent received 239 days of Patent Term Adjustment. Kim Decl. Ex. G
`
`at WA-0003960.
`
`30.
`
`31.
`
`The ’530 patent received 181 days of Patent Term Adjustment. Ex. 4570.
`
`Caterpillar’s reliance on the time elapsed from filing the original parent
`
`application to argue that Wirtgen delayed prosecution of the ’530 patent does not account for
`
`these Patent-Office delays.
`
`32.
`
`Caterpillar does not point to any unusual extensions or delays attributable to
`
`Wirtgen in the prosecution record of the ’530 patent or its family members.
`
`33.
`
`The original ’846 application was filed March 2008 and issued to become the
`
`parent ’592 patent in February 2012. There is no dispute that Wirtgen diligently prosecuted the
`
`’592 patent.
`
`34.
`
`Pursuant to 35 U.S.C. § 120, Wirtgen filed the ’305 continuation application prior
`
`to the issuance of the ’592 patent, in January 2012. There is no dispute that Wirtgen diligently
`
`prosecuted that application, which issued in April 2015 as the ’871 patent.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 10 of 26 PageID #: 34700
`
`
`
`35. Wirtgen similarly filed the ’273 continuation application in April 2015, and
`
`diligently prosecuted it to issue as the asserted ’530 patent two years later.
`
`36.
`
`Caterpillar does not argue that the ’530 patent claims as issued are not supported
`
`by the original specification.
`
`37. Wirtgen pursued claims to machines without individually adjustable legs as of the
`
`filing date of the application that issued to become the ’530 patent—before Caterpillar’s
`
`infringing machines launched.
`
`38.
`
`For instance, in the second Preliminary Amendment, filed in April 2015,
`
`independent claim 23 lacked any limitations drawn to individually adjustable legs. Ex.
`
`4570A.0410 (prelim. amendment).
`
`39.
`
`None of Caterpillar’s previous disclosures suggested that Wirtgen’s removal of
`
`the “individually adjustable” limitation was the basis for its prosecution laches argument.
`
`40.
`
`The rear legs in prior versions of Caterpillar’s machines have never been
`
`independently adjustable. See Engelmann Decl., ¶ 8.
`
`41.
`
`There is no evidence that Caterpillar invested in its infringing machines
`
`specifically because it believed that it was clear of Wirtgen’s claims or because Wirtgen’s
`
`prosecution strategy led it to believe that Wirtgen had no exclusive rights in Caterpillar’s
`
`technology.
`
`42.
`
`Caterpillar did not attempt to design-around Wirtgen’s patents until after the ITC
`
`issued an injunction against their continued sale. See Tr. 441:24–445:14; Ex. H; Ex. 263A.
`
`43.
`
`Caterpillar introduced new machines as late as last year that the jury found to
`
`infringe the ’530 patent. Tr. 377:1–10.
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 11 of 26 PageID #: 34701
`
`
`
`C.
`44.
`
`Prosecution history and timing of the ’268 patent.1
`
`The ’268 patent is a reissue patent with amended claims that are narrower than the
`
`original patent claims.
`
`45.
`
`Caterpillar does not cite any evidence that it had a good-faith belief during the
`
`intervening period that the original patent claims were invalid.
`
`46. Mr. Engelmann did not mention the ’268 patent in his testimony about good-faith
`
`beliefs of noninfringement (or invalidity). See generally Tr. 365:20–558:22.
`
`47.
`
`Caterpillar cites an expert declaration from Dr. Klopp comparing the original
`
`claims to claims from a foreign patent that were invalidated under a foreign country’s patent law
`
`after the relevant time.
`
`48.
`
`Caterpillar cites no evidence that the similarity between the original claims and
`
`the invalidated foreign claims gave rise to a reasonable good-faith belief—at the relevant time—
`
`on the part of Caterpillar that the original claims are invalid.
`
`49.
`
`Caterpillar does not cite any evidence that it reasonably and detrimentally relied
`
`on a belief in invalidity in deciding to invest in its infringing machines.
`
`50.
`
`Caterpillar does not present any evidence revealing the dollar amount of its
`
`investment in the specific technology claimed in the ’268 patent (engine mounting).
`
`51.
`
`Caterpillar claims to have made a total investment of $30 million in the accused
`
`machines.
`
`52.
`
`Caterpillar has realized over $120 million in profit for these machines so far. See
`
`Ex. I.
`
`
`1 The proposed findings of fact in this section assume that the Court has entered judgment as a
`matter of law that Caterpillar’s accused machines infringe the ’268 patent and that the patent is
`not invalid—consistent with Wirtgen’s co-pending motion for JMOL.
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 12 of 26 PageID #: 34702
`
`
`
`D.
`53.
`
`Relevant procedural history of claim 5 of the ’788 patent.
`
`The jury found that Caterpillar infringes claim 5 of the ’788 patent and that the
`
`patent is not invalid.
`
`54.
`
`Caterpillar previously filed an IPR challenging the claims of Wirtgen’s ’395
`
`patent. That patent was not asserted at trial in this case.
`
`55.
`
`The PTAB found that a preponderance of the evidence presented in an IPR of the
`
`’395 patent supported unpatentability of claim 1 of that patent.
`
`56.
`
`Claim 5 of the ’788 patent depends from claim 1 of the ’788 patent. Claim 5
`
`undisputedly has a different scope than claim 1 of the ’395 patent.
`
`57.
`
`Specifically, at least two limitations in the ’788 patent claim 5 are not in the ’395
`
`patent claim 1: (1) the switchover device and indication and setting devices’ ability to pre-select
`
`a replacement sensor, and (2) the switchover device and indication and setting devices’ ability to
`
`pre-set the sensor’s operating parameter.
`
`58.
`
`Claim 5 of the ’788 patent also provides a temporal requirement of when the
`
`replacement sensor’s operating parameter is set. Namely, it is pre-set prior to effecting the
`
`switchover.
`
`59.
`
`Claim 1 of the ’788 patent, like claim 1 of the ’395 patent, has no temporal
`
`requirement for when the operating parameter for replacement sensor is set. Claim 1 simply
`
`requires that the indication and setting devices are operable to set an operating parameter set
`
`value for an associated sensor with no specificity of when the set value is actually set.
`
`60.
`
`Caterpillar does not argue that claim 5 of the ’788 patent adds nothing to claim 1
`
`from which it depends.
`
`61.
`
`Caterpillar attaches to its motion a new expert declaration from Dr. Smith
`
`comparing the claims of the ’395 and ’788 patents.
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 13 of 26 PageID #: 34703
`
`
`
`62.
`
`Dr. Smith’s analysis of the claims fails to account for all of the material
`
`differences in claim scope, as illustrated in the side-by-side comparison below.
`
`
`
`9
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 14 of 26 PageID #: 34704
`
`
`
`63.
`
`As shown above, the ’788 patent claim 1 separately specifies that features of the
`
`“controller” and the features of the “switchover device.” In contrast, the ’395 patent claim 1
`
`specifies the features of the collective “controller and switchover system”—in the ’395 patent
`
`claim 1, either the controller or the switchover device can have the recited features.
`
`E.
`64.
`
`The expert declarations of Drs. Klopp and Smith.
`
`Caterpillar’s Motion attaches two new expert declarations providing new
`
`opinions. See D.I. 368 (Klopp Declaration); D.I. 367 (Smith Declaration).
`
`65.
`
`Dr. Klopp compares the limitations of the original claims of the ’268 patent to the
`
`claims of a foreign patent that were later invalidated under European law. He concludes that the
`
`claims are substantially similar.
`
`66.
`
`Dr. Smith compares the limitations of claim 1 of the ’395 patent with claims 1 and
`
`5 of the ’788 patent. He concludes that the claims are substantially similar.
`
`67.
`
`The opinions and propositions presented in these declarations were never
`
`disclosed in Caterpillar’s responses to interrogatories, not included in these experts’ reports, and
`
`not mentioned in the pretrial order.
`
`68.
`
`Caterpillar has presented no justification for disclosing these opinions for the first
`
`time in the context of this post-trial motion, nor has Caterpillar alleged that the late timing of
`
`these disclosures is harmless.
`
`II.
`
`PROPOSED CONCLUSIONS OF LAW
`
`A. Wirtgen is not judicially estopped from asserting claim 29 of the ’309 patent.
`Caterpillar did not raise judicial estoppel in its answer, in its interrogatory
`69.
`
`responses, or in the pretrial order. It has therefore forfeited this defense.
`
`70.
`
`Even if this defense were preserved, Caterpillar has not shown that judicial
`
`estoppel should apply for three independently sufficient reasons.
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 15 of 26 PageID #: 34705
`
`
`
`71.
`
`First, there is no inconsistency between the positions Wirtgen took before the
`
`patent Trial and Appeal Board and in this litigation.
`
`72. Wirtgen presented ample evidence at trial that a jury could have credited to find
`
`infringement of claim 29. There is no inconsistency between (a) Dr. Lumkes’s opinion of
`
`infringement based on his analysis of the Caterpillar’s CAD models and the actual machines and
`
`(b) Wirtgen’s argument to the Board that Caterpillar’s speculation about the approximate
`
`location of the stability pattern in the hypothetical Swisher-Neumeier combination was
`
`insufficient to show inherency.
`
`73.
`
`Second, Caterpillar does not show the requisite bad faith. See Elm 3DS
`
`Innovations, LLC v. Samsung Elecs. Co., Ltd., 2021 WL 2070338, at *2 (D. Del. May 24, 2021)
`
`(affirming magistrates order that judicial estoppel did not apply due to no showing of bad faith)
`
`(citing Montrose Med. Grp. Participating Sav. Plan v. Bulger, 243 F.3d 773, 780–81 (3d Cir.
`
`2001) (“Inconsistencies are not sanctionable unless a litigant has taken one or both positions in
`
`bad faith.”)). The record does not suggest that Wirtgen changed positions at all, much less that it
`
`did so with ill intent to gain an unfair tactical advantage.
`
`74.
`
`Third, the use of judicial estoppel here is not tailored to the harm. See Bulger, 243
`
`F.3d at 778–80 (“[U]se of judicial estoppel” must be “tailored to address the harm identified and
`
`no lesser sanction would adequately remedy the damage done.”). The alleged harm of which
`
`Caterpillar complains would have been properly redressed through cross-examination of
`
`Wirtgen’s expert before the jury.
`
`B.
`75.
`
`There is no prosecution laches rendering the ’530 patent unenforceable.
`
`Caterpillar does not meet its burden of showing the requirements for prosecution
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`laches with respect to the ’530 patent.
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`Case 1:17-cv-00770-JDW Document 382 Filed 05/10/24 Page 16 of 26 PageID #: 34706
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`76.
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`The doctrine of prosecution laches was created to punish an applicant that
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`engages in egregious dilatory tactics, lying in wait while others “produced new forms of
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`improvement,” and thereafter “enlarging” his claim to “embrace these new forms.” Miller v.
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`Bridgeport Brass Co., 104 U.S. 350, 355 (1881). Wirtgen did not engage in such tactics here.
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`77.
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`In prosecuting the ’530 patent, Wirtgen did not deviate from how a reasonable
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`patent applicant would prosecute his patent under similar circumstances. See Reiffin v. Microsoft
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`Corp., 270 F. Supp. 2d 1132, 1155 (N.D. Cal. 2003).
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`78.
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`Factors relevant to laches include whether (1) the prosecution history of the
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`plaintiff’s patents was typical of that field or patents generally; (2) any unexplained gaps exist in
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`the prosecution history; (3) the plaintiff took any unusual steps to speed or delay the application
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`process; (4) the PTO or other reviewing body took any unusual steps to speed or delay the
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`application process; (5) the plaintiff took any steps during prosecution to limit public awareness
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`of his pending applications or the inventions he sought to patent; (6) any changes in the
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`plaintiff’s prosecution of the application coincided with or directly followed evolutions in the
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`field that relate to the claimed invention; and (7) legitimate grounds exist for the abandonment of
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`prior applications. Id. at 1155.
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`79.
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`Caterpillar does not present any evidence relevant to considerations 1, 3, 4, 5, or
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`7. All of these considerations weigh against laches in view of the prosecution history here.
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`80.
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`For consideration (2), there is no “unexplained gap” in prosecution, nor did the
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`’530 patent have an unusual pendency for a patent that issued from a continuation application.
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`See Natera, Inc. v. ArcherDXdx, Inc., 2023 WL 5705962, *9 (D. Del. Sept. 5, 2023) (finding a
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`10-year delay not unreasonable); Cordance Corp. v. Amazon.com, Inc., 631 F. Supp. 2d 484,
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`491(D. Del. 2009) (finding 7 years of prosecution not an unreasonable delay).
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`81.
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`The burden is on Caterpillar to identify gaps and show unreasonableness. Tallying
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`a cumulative passage of time is not sufficient to meet that burden. See Natera, 2023 WL
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`5705962, at *9 (passage of time alone does not show unreasonableness); Cordance, 631 F. Supp.
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`2d at 491 (same).
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`82. Merely prosecuting an original application and two continuations does not suggest
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`a pattern of gamesmanship. See Shire Orphan Therapies LLC v. Fresenius Kabi USA, LLC, 2018
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`WL 2684097, at *22 (D. Del. June 5, 2018) (“The filing of multiple continuing applications is
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`not per se unreasonable.”) (citing Novozymes A/S v. Genencor Int’l, Inc., 446 F. Supp. 2d 297,
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`333–34 (D. Del. 2006)); see also Nomadix, Inc. v. Hosp. Core Servs. LLC, 2015 WL 3948804,
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`*10–12 (C.D. Cal. June 29, 2015) (finding a long series of continuation applications not
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`unreasonable).
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`83.
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`The only delays in the prosecution of the ’530 patent and the parent applicants in
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`its priority chain were the result of Patent Office delays, as reflected in the nearly three-and-a-
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`half years of Patent Term Adjustment awarded.
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`84.
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`For consideration (6), Caterpillar suggests that Wirtgen amended its patent claims
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`for the purpose of ensnaring Caterpillar’s new machines, but “there is nothing improper, illegal,
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`or inequitable in filing a patent application for the purpose of obtaining a right to exclude a
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`known competitor’s product from the market; nor is it in any manner improper to amend or insert
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`claims intended to cover a competitor’s product the applicant’s attorney has learned about during
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`the prosecution of a patent application.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863
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`F.2d 867, 874 (Fed. Cir. 1988).
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`85.
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`Accordingly, an applicant may obtain new claims directed to improved
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`inventions—even improved inventions that a competitor is currently selling—as long as those
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`inventions are fully disclosed and supported in an earlier application. See In re Bogese, 303 F.3d
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`1362, 1369 (Fed. Cir. 2002).
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`86.
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`Caterpillar’s prosecution laches argument relies primarily on Sonos Inc. v. Google
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`LLC, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023), which is factually distinguishable.
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`87.
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`In Sonos, Sonos and Google were negotiating a potential collaboration and
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`sharing sensitive information about Sonos’s IP and Google’s new products. Id. at *10. The
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`evidence showed that Sonos’s delay in seeking claims that read on Google’s products lulled
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`Google into a false sense of security. Id. at *17. The new claims that covered Google’s
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`competing product lacked written-description support in Sonos’s earlier applications. See id. at
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`*18 (finding that “Sonos’s machinations during prosecution, inserting new matter into the
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`specification and masquerading it as subject matter previously disclosed,” warranted application
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`of prosecution laches).
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`88.
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`None of those facts is present here. There is no history of cooperation and trust
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`between these parties. Nor is there any evidence that Caterpillar expected Wirtgen to have filed
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`for certain patents by a certain time if it was going to file them at all. Wirtgen did not abuse any
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`partnership or use information from Caterpillar shared in confidence in order to gain a tactical
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`advantage; it merely engaged in standard competitive intelligence gathering using public
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`information.
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`89.
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`Caterpillar does not argue that the claims it was found to infringe lack written-
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`description support in Wirtgen’s initial application. Caterpillar’s motion does not present any
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`compelling evidence of unfair prejudice due to Wirtgen’s alleged delay in prosecuting the
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`asserted claims.
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`C.
`90.
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`’268 patent.
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`There are no intervening rights for the ’268 patent.
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`The record does not establish that Caterpillar has intervening rights vis-à-vis the
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`91.
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`There are two kinds of intervening rights: absolute and equitable. Neither applies
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`here.
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`92.
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`Absolute intervening rights applies to products made before a reissue patent
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`issues if the claims of the reissue are materially different in scope. See 35 U.S.C. § 252; Eberle v.
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`Harris, 2010 WL 6281563, at *5 (D.N.J. June 30, 2010).
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`93. Wirtgen has not sought damages for which absolute intervening rights would
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`apply, i.e., damages for products that predate the reissue patent claims. The doctrine is thus
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`inapplicable.
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`94.
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`Equitable intervening rights is a discretionary doctrine that may apply where a
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`defendant did not infringe a patent’s original claims but does infringe reissued claims, and where
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`the defendant incurred substantial costs preparing the product before it was infringing. See John
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`Bean Techs. Corp. v. Morris & Assocs., Inc., 988 F.3d 1334, 1338 (Fed. Cir. 2021).
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`95.
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`“The rationale underlying equitable intervening rights ‘is that the public has the
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`right to use what is not specifically claimed in the original patent.’” Id. (emphasis added). In
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`other words, if a patentee broadens claims as part of a reissue to capture machines that did not
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`infringe the original patent, equity may dictate that an otherwise infringing party who began
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`investing in products in reliance on the old claim scope should be permitted to continue making
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`and selling those products even after