Case 1:17-cv-00770-JDW Document 384 Filed 05/10/24 Page 1 of 6 PageID #: 35002
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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/Counterclaim-Defendant,
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`V.
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`Civil Action No. 1: l 7-cv-00770-JDW
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`CATERPILLAR INC.,
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`Defendant/Counterclaim-Plain tiff.
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`DECLARATION OF GARY L. MONTLE
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`I, GARY L. MONTLE, hereby declare under penalty of perjury pursuant to 28 U.S.C.
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`§ 1746, that the following is true and conect:
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`1.
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`I am an attorney licensed to practice law in the State of Tennessee and a
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`Shareholder at the law firm of Patterson Intellectual Property Law, P.C., counsel for Wirtgen
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`GmbH and Wirtgen America, Inc. I am over the age of eighteen (18) years and am not a party to
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`this action. I am personally familiar with the facts set forth herein, unless the context indicates
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`otherwise, and if called upon to do so could competently testify thereto.
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`2.
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`I received my B.S. in Electrical Engineering from University ofTennessee-
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`Chattanooga in 1996 and my J.D. from Vanderbilt University School of Law in 2008. I joined
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`Patterson Intellectual Property Law, P.C. in 2008 and have been a shareholder at the firm since
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`2016.
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`3.
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`I am personally familiar with the procedures for the prosecution of patent
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`applications based on my own practice, and more specifically the practice of filing, continuation
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`patent applications prior to issuance of a parent application.
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`4.
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`I am also personally familiar with the prosecution of U.S. Patent No. 9,656,530
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`("the '530 patent") and its related patent family, and more pmiicularly the diligence with which
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`these c01Tesponding patent applications were prosecuted at the U.S. Patent and Trademark Office
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`("PTO") based on my involvement with the prosecution of the '530 and related patents.
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`5.
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`In my experience, it is extremely common to file at least one continuation patent
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`application from a parent application, both in my own practice and based on my general
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`knowledge of how others conduct their own practices. My understanding is based in pati on
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`successful results in continuation applications I have prosecuted, discussions with colleagues,
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`published academic atiicles and blogs, published statistics from the PTO, and extensive review
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`of federal case law.
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`6.
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`In one example I have encountered, if the written description for an original
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`patent application clearly discloses more than one invention, then a continuation application ( or a
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`divisional patent application, depending on whether the original claims presented multiple
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`inventions) is necessaty to cover each of these inventions. While multiple patent applications
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`could have originally been filed to cover each invention that is considered patentable, in my
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`experience it is often preferred by applicants to seek patent protection in sequence, to defer costs
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`and/or obtain some certainty in the form of a first issued patent before proceeding to pursue
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`additional patents.
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`7.
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`In another example I have encountered, the PTO may find some claims
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`encompassing one or more species of an invention allowable, while still rejecting one or more
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`other claimed species of the invention. In my experience, it is quite common and a good practice
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`to allow a first patent to issue with the allowed claims, and pursue the rejected claims, or a
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`variant thereof, in at least one continuation application.
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`8.
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`In another example I have encountered, claims may be found allowable, but only
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`after multiple rounds of negotiation with the patent examiner, with many claim amendments that
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`were entered into the record at various stages but were not persuasive. In my experience, it is
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`quite common and a good practice to allow the patent to issue with the allowed claims, and to
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`file at least one continuation application to pursue claims that focus on ce1iain subject matter(cid:173)
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`namely, limitations that were highlighted by the examiner in the reasons for allowance-while
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`removing at least some of the other limitations.
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`9.
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`In another example I have encountered, the allowed claims may be directed to one
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`or more of a method of operation, a method of manufacture, an apparatus, a system including
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`such an apparatus, etc., while omitting one or more of the other types. A continuation application
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`may be considered to supplement the scope of the original patent. For example, allowed claims
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`in an original patent may recite a specific machine configured to perform certain operations. In
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`some cases, claims will also be allowed which recite a server-based or distributed computing
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`system configured to perform such operations, or a method for performing such operations
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`without specific limitations to the structure. In many cases these claims are pursued instead in
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`continuation or divisional patent applications.
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`10.
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`It is not uncommon in my experience for an applicant to be unsure whether a
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`continuation application is appropriate or desirable at the time a parent application is due to
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`issue, and to simply file a continuation application without the filing fees to preserve the
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`continuity. In such cases, a preliminary amendment and the filing fees may be added later, or the
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`continuation application may be simply abandoned if no desirable set of claims is discerned.
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`11.
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`I am unaware of any PTO rules or federal case law which would require, or even
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`suggest, that the filing of a continuation patent application is improper in any of the above
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`Case 1:17-cv-00770-JDW Document 384 Filed 05/10/24 Page 4 of 6 PageID #: 35005
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`situations, as long as the continuation patent application is diligently prosecuted from the time it
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`is filed.
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`12.
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`According to published PTO statistics from April 2022 to April 2023, the average
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`pendency of continuation patent applications (i.e., measured from the filing date of the parent
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`application to disposal of the continuation application at issue) ranges between 60-70 months,
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`and for divisional patent applications the equivalent number is about 70-80 months. See
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`https://www.uspto.gov/dashboard/patents/pendency.html (reviewed May 8, 2024), charts for
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`"Pendency of Continuation Applications" and "Pendency of Divisional Applications."
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`13.
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`According to the same source (again referring to the view on May 8, 2024), the
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`measured pendency of patent applications ( as the average number of months from the patent
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`application filing date to the date the application has been disposed over the past tlu·ee months),
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`is 25.6 months if excluding applications in which Requests for Continued Examination (RCEs)
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`have been filed, or 43.1 months for applications in which RCEs have been filed.
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`14.
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`In a slide deck entitled "Pendency update and continuation practice data"
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`published in 2020 by the PTO, it was noted on page 5 that continuation patent applications
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`"[ n ]ow account for nearly a quarter of all serialized filings," and that "26% of issued patents
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`spawn a continuation."
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`15.
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`Further by reference to data obtained from Juristat, and specifically regarding a
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`cross-sectional data sample including continuation applications with an issuance date in January
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`2024, in Technology Centers 1600 (bio ), 1700 ( chemical) and 2600 ( electrical), of 3,313 such
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`continuation applications, 2,237 (67.5%) had two or more parent applications in the same family.
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`See Juristat Data attached hereto as Exhibit 1 to my declaration.
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`16.
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`In my personal experience, specifically regarding Wirtgen GmbH, I have been
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`involved in 59 families of patent applications where at least one patent has issued. At least one
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`Case 1:17-cv-00770-JDW Document 384 Filed 05/10/24 Page 5 of 6 PageID #: 35006
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`continuation patent application has been filed in 41 of these families. Of these 41 families, 28
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`include two or more continuation applications, a number which closely approximates the 67 .5%
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`number we an-ive at by reference to the Juristat numbers above.
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`17.
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`One such family includes the '530 patent. Based on my personal lmowledge, the
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`'530 patent, as well as its parent and grandparent in the same family, were prosecuted diligently
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`at the PTO. There were no unusual delays, gaps in prosecution, or unusual extensions of time
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`attributable to Wirtgen GmbH.
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`18.
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`As shown on the face of the patent, the first patent in this family, U.S. 8,113,592,
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`has a term that was adjusted by 688 days to account for delays caused by the PTO during its
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`prosecution. The entirety of this 688 day adjustment is attributable to delays by the PTO. The
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`Patent Term Adjustment calculation subtracts any delays attributable to the Applicant. See 35
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`U.S.C. 154(b)(2).
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`19.
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`There were two instances where Wiltgen GmbH did not file within the shortened
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`statutory period for reply after an Office Action, once after an Office Action mailed June 3,
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`2010, and again after an Office Action mailed May 13, 2011. In both cases, the response was
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`filed less than one month after the specified three-month period, and well within the allowable
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`six-month period. All other actions during prosecution of the '592 patent were taken well within
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`the respective specified periods.
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`20.
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`The second patent in this family, U.S. 9,010,871, has a term that was adjusted by
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`23 9 days to account for delays caused by the PTO during its prosecution. The entirety of this 23 9
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`day adjustment is attributable to delays by the PTO.
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`21.
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`There was one instance where Wirtgen GmbH did not file within the shmiened
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`statutory period for reply after an Office Action, after an Office Action mailed October 4, 2013.
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`The response to that Office Action was filed within five months of the Office Action being
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`Case 1:17-cv-00770-JDW Document 384 Filed 05/10/24 Page 6 of 6 PageID #: 35007
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`mailed, after conducting an in-person interview with the Examiner which also included a
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`representative of the patent owner that had traveled from Germany. All other actions during
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`prosecution of the '871 patent were taken well within the respective specified periods.
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`22.
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`The '530 patent is the third patent in this family, and has a term that was adjusted
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`by 181 days to account for delays caused by the PTO during its prosecution. The entirety of this
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`181 day adjustment is attributable to delays by the PTO.
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`23.
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`There was one instance where Wiltgen GmbH did not file within a shortened
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`statutory period for reply. A Notice to File Missing Patts was mailed April 24, 2015, with a
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`shmtened statutmy period of two months for reply, and a response was filed on July 31, 2015.
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`All other actions during prosecution of the '530 patent were taken well within the respective
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`specified periods.
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`24.
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`All of the actions referenced herein with respect to prosecution of the '592 patent,
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`the '871 patent, and the '530 patent, and which could qualify as delay by Wirtgen GmbH, are
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`accounted for in the respective patent term adjustments. These types of delays are all extremely
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`common in the context of standard prosecution. There are no extended gaps in prosecution of
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`any of the applications in this family nor any gaps could be attributed to intentional acts of delay
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`by Wirtgen GmbH.
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`I hereby declare, under penalty of perjury under the laws of the United States of America,
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`that the foregoing is true and correct.
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`Executed this 10th day of May, 2024, at Nashville, Tenness e.
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`22350597.1
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`6
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