Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 1 of 10 PageID #: 36573
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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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`CATERPILLAR INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`C.A. No. 17-770-JDW
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`Defendant/Counterclaim-Plaintiff.
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`WIRTGEN AMERICA’S REPLY IN SUPPORT OF ITS
`MOTION TO STRIKE UNTIMELY NEW EXPERT OPINIONS
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 2 of 10 PageID #: 36574
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`I.
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`II.
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`TABLE OF CONTENTS
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`Dr. Smith’s and Dr. Klopp’s Opinions are New Opinions. ................................................ 2
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`Caterpillar’s Excuses for its Untimeliness Do Not Satisfy the Pennypack Factors. ........... 4
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`TABLE OF AUTHORITIES
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`Page(s)
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`1.
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`Fed. R. Civ. P. 26. ..........................................................................................7
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`i
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 3 of 10 PageID #: 36575
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`Wirtgen America provides this brief reply in support of its motion to strike the improper
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`new expert declarations attached to Caterpillar’s motion regarding estoppel and equitable
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`defenses in order to correct several misrepresentations of the record in Caterpillar’s opposition.
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`The opinions expressed in Dr. Smith’s and Dr. Klopp’s new declarations go beyond
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`“elaboration” and “new facts.” Contra Cat. Opp. at 1-2. Tellingly, Caterpillar does not identify
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`any citations in either of the experts’ previously disclosed reports where they provide the
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`opinions upon which Caterpillar’s estoppel Motion relies. The fact that these experts previously
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`offered other opinions on the same patents does not render these new opinions mere
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`“elaboration.” They are untimely new opinions and should be stricken.
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`As a procedural matter, Caterpillar notes that Wirtgen did not meet and confer with
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`Caterpillar prior to filing its cross-motion to strike these declarations. See Cat. Opp. at 1 n.1.
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`Wirtgen does not believe that any such conference was required. The impropriety of these
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`declarations is not a discovery dispute. Caterpillar is seeking to introduce sworn testimony into
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`the record that goes beyond the expert opinions previously disclosed. While Caterpillar’s
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`equitable defenses are being litigated by way of post-trial briefing, the governing principles of
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`this stage of the litigation (including objections to evidence and motions to strike) are akin to that
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`which would apply to testimony being introduced at trial.
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`If Caterpillar wanted to introduce new evidence, then it should have at least served
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`supplemental expert reports and produced its witnesses for deposition. Caterpillar not only chose
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`not to, but it represented to this Court that it would not need to introduce new evidence related to
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`its equitable defenses. See Tr. 2276:6-7 (stating that Caterpillar had “largely [] put the evidence
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`in we needed to support our equitable defenses.”). The Court even asked the parties whether a
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`hearing on these additional issues would be appropriate, and Caterpillar confirmed that its
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 4 of 10 PageID #: 36576
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`equitable defenses could be decided on the briefing. See Tr. 2276:16-19, 2276:25-2277:7.
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`Accordingly, the Court did not reserve for Caterpillar any additional hearing time or order the
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`kinds of procedures that would be needed to accommodate new expert opinion testimony. Nor
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`did Caterpillar give Wirtgen any notice that it would be submitting new expert opinions and
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`sworn testimony related to its equitable defenses. Had it, Wirtgen could have requested to reopen
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`expert discovery or conduct depositions, as the parties have done with certain damages issues.
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`I.
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`Dr. Smith’s and Dr. Klopp’s Opinions are New Opinions.
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`Dr. Smith did not previously provide an element-by-element comparison of claim 1 of the
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`’788 patent with claim 1 of the ’395 patent. Contra Cat. Opp. at 2-3. The paragraphs of Dr.
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`Smith’s expert report that Caterpillar cites relate to his opinion that the claims of the ’788 patent
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`are obvious over Davis. Id. (citing Smith Decl. ¶¶ 18-49). In support of that opinion, Dr. Smith
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`pointed to various PTAB findings concerning claim 1 of the ’395 patent. He does not offer any
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`opinion that claim 1 of the ’788 is substantially the same (or an obvious variation) of claim 1 of
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`the ’395 patent. There is no such comparison of these claims anywhere in his report.
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`Moreover, Dr. Smith’s report did not provide any comparative analysis for claim 5 of the
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`’788 patent. He never compared the additional limitations of claim 5 with any claim that the
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`PTAB invalidated in the ’395 patent. Claim 5—not claim 1—of the ’788 patent is at issue here.
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`Accordingly, Dr. Smith’s new opinion on claim 1 is not even relevant. Caterpillar’s attempt to
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`repackage various statements about the ’474 and ’395 patents into a new opinion fails.
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`In contrast, for example, Dr. Smith’s expert report did provide claim-element
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`comparisons regarding the ’474 patent and ’395 patent, explicitly opining that claims 19 and 21
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`of the ’474 patent are “substantially the same and/or obvious variations of” the ’395 patent. See
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`D.I. 388, Ex. 1 (Smith Opening Expert Report) at 207. He did not provide a similar analysis for
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`claims 1 and 5 of the ’788 patent. His report therefore does nothing to put Wirtgen on notice of
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`2
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 5 of 10 PageID #: 36577
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`any opinions regarding the similarities between the ’788 and ’395 patents, such as those he now
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`provides.
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`Caterpillar states that Dr. Smith’s opinion that claim 5 is similar to claim 1 of the ’395
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`patent “was also previously disclosed.” Cat. Opp. at 4 (citing Smith Op. Rpt. ¶¶ 302-307). The
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`cited paragraphs of the report, however, analyze claim 5 in view of the Davis and Brabec prior-
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`art combination. There is no mention in those paragraphs of any applicable PTAB findings or
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`substantial similarity between claim 5 and any claims that the PTAB previously found invalid.
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`Moreover, the fact that Dr. Smith expressly offered the opinion in his opening expert report that
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`certain claims of a related patent—the ’474 patent—were “substantially similarly and/or obvious
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`variants” of the ’395 patent shows that Dr. Smith (and Caterpillar) understood how to properly
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`disclose an opinion relating to collateral estoppel.
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`Likewise, the analysis in Dr. Klopp’s new declaration is found nowhere in his prior
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`report. Caterpillar cannot contend otherwise. In purported defense of Dr. Klopp’s opinions,
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`Caterpillar cites three short paragraphs of his opening expert report in which he summarizes the
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`Italian proceeding that challenged Wirtgen’s European patent. See Cat. Opp. at 6 (citing Klopp
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`Op. Rpt. ¶¶ 28-30). Nothing in that high-level summary compares the claims at issue on an
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`element-by-element basis or opines on the scope and validity of the ’659 patent—the original
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`patent reissued as the ’268 patent. Dr. Klopp’s expert report thus does not provide notice of his
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`new opinions that each limitation of a claim of the Italian patent is substantially similar to the
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`’659 patent.
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`Caterpillar thus fails to show that any of the opinions in Dr. Smith’s and Dr. Klopp’s
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`declarations can be found in either of their prior expert reports. They are new.
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 6 of 10 PageID #: 36578
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`II.
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`Caterpillar’s Excuses for its Untimeliness Do Not Satisfy the Pennypack Factors.
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`To the extent Caterpillar cannot deny the new substance of its expert opinions, it tries to
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`excuse them by suggesting that they “arose out of trial testimony from Wirtgen’s experts.” Cat.
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`Opp. at 4. That suggestion is nonsensical. Collateral estoppel arises from arguments made and
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`decided by a prior tribunal—here, the PTAB. Caterpillar was well aware of the PTAB
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`proceeding and its relationship to Wirtgen’s infringement theories before trial. Importantly, there
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`is no allegation that any of the trial testimony from Wirtgen’s experts surprised Caterpillar. Dr.
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`Rahn’s testimony, for example, was entirely consistent with the opinions he expressed in his
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`expert report and in his deposition. Accordingly, there is no reason Caterpillar had to wait to
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`blindside Wirtgen with new estoppel opinions after the trial ended.
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`Caterpillar’s suggestion that Wirtgen could have deposed and cross-examined its experts
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`on their estoppel opinions is equally nonsensical. Cat. Opp. at 6. There is no way that Wirtgen
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`could have cross-examined witnesses on subject matter outside their trial testimony. Nor could
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`Wirtgen have deposed the experts on opinions not disclosed in the expert reports because they
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`allegedly “arose out of trial.” Id. at 4. The only opportunity for such cross-examination would
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`have been to hold a hearing on Caterpillar’s equitable defenses at which Caterpillar presented
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`these witnesses. Caterpillar specifically declined a post-trial hearing on the basis that there would
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`be no new evidence introduced for its equitable defenses.
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`Caterpillar next suggests that Wirtgen could cure the prejudice resulting from its untimely
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`expert reports by submitting competing expert declarations. Cat. Opp. at 6. Contrary to
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`Caterpillar’s two-wrongs-make-a-right mentality, counter-ambushing Caterpillar with even more
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`untimely expert opinions cures nothing. The prejudice remains that Wirtgen never had an
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`opportunity to depose or cross-examine Caterpillar’s witnesses on their new opinions. The Court
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`is likewise deprived of its ability to weigh the credibility of Caterpillar’s witnesses through their
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`4
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 7 of 10 PageID #: 36579
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`responses to questioning. Caterpillar chose to present its equitable defenses solely on papers
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`within the confines of the existing evidentiary record. It cannot now have a change of heart and
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`submit new expert testimony through untested declarations.
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`Caterpillar then tries to justify the disruptive timing of its new evidence by contending
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`that the parties agreed to brief equitable defenses after trial. Cat. Opp. at 7. That is not correct.
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`Caterpillar wanted to present equitable defenses to the jury, which Wirtgen opposed as improper.
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`The Court rightly ruled that equitable defenses should not go to the jury. Pretrial Conf. Tr. 26-28.
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`But nothing in that ruling prevented Caterpillar from seeking to reopen discovery and having a
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`hearing with testimony if needed. Moreover, Caterpillar could have raised its estoppel arguments
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`at summary judgment, or as motions in limine.
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`At the very least, Caterpillar should have set forth the opinions presented in these
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`declarations in the pretrial order. Caterpillar’s Opposition states that these defenses are
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`mentioned in the Pretrial Order, but provides no excuse for failing to identify the expert opinions
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`that support them. See Cat. Opp. at 7. This response is especially disingenuous where Caterpillar
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`initially wanted to present its equitable defenses during trial. Caterpillar therefore must have at
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`least known what its defenses were going to be and prepared its presentations in advance.
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`Finally, Caterpillar’s assertion that its untimely evidence was introduced without “bad
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`faith” is dubious and irrelevant. See Cat. Opp. at 7. Caterpillar represented to the Court that its
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`equitable defenses could be submitted on briefs, without opening discovery, holding a hearing, or
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`introducing new evidence. Caterpillar then ambushed Wirtgen with new evidence. That kind of
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`brazen violation of Rule 26 does not happen in good faith. See Fed. R. Civ. P. 26. Accordingly,
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`and for the reasons discussed in Wirtgen’s motion, the Court should strike both of Caterpillar’s
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`improper expert declarations.
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`5
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 8 of 10 PageID #: 36580
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`YOUNG CONAWAY STARGATT & TAYLOR,
`LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Alexis N. Stombaugh (No. 6702)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`astombaugh@ycst.com
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`Dated: May 31, 2024
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`Of Counsel:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`Roundabout Plaza
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
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` -
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` and -
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`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`William H. Milliken
`Kyle E. Conklin
`Deirdre M. Wells
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1101 K Street NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`wmilliken@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`josephk@sternekessler.com
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`Attorneys for Wirtgen America, Inc.
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`31700792.1
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`6
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 9 of 10 PageID #: 36581
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff Esquire, hereby certify that on May 31, 2024, I caused the foregoing
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`document to be served by email upon the following counsel:
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`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
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`Lucy Yen
`Michelle Dang
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`1301 Avenue of the Americas
`40th Floor
`New York, NY 10019
`lyen@wsgr.com
`mdang@wsgr.com
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`Matthew A. Macdonald
`Naoya Son
`Alexander Turner
`Neil N. Desai
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`953 East Third Street
`Suite 100
`Los Angeles, CA 90013
`matthew.macdonald@wsgr.com
`nson@wsgr.com
`aturner@wsgr.com
`ndesai@wsgr.com
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`caterpillar@wsgr.com
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Alexis N. Stombaugh (No. 6702)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`astombaugh@ycst.com
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`Case 1:17-cv-00770-JDW Document 400 Filed 05/31/24 Page 10 of 10 PageID #: 36582
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`Attorneys for Plaintiff
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