Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 1 of 32 PageID #: 37984
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`
`
`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`
`
`)))))))))
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`
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`
`
`Plaintiff,
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`
`
`v.
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`
`
`Defendant.
`
`CATERPILLAR INC.’S BRIEF IN SUPPORT OF ITS OPPOSITION TO WIRTGEN
`AMERICA’S MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO
`FRCP 50(b), OR IN THE ALTERNATIVE, A NEW TRIAL PURSUANT TO FRCP 59
`
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Dated: June 7, 2024
`11553483 /11898.00005
`
`
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 2 of 32 PageID #: 37985
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`I.
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`TABLE OF CONTENTS
`
`PAGE
`
`INTRODUCTION ............................................................................................................1
`
`II.
`
`FACTUAL BACKGROUND ...........................................................................................2
`
`III.
`
`LEGAL STANDARD .......................................................................................................4
`
`IV.
`
`ARGUMENT ....................................................................................................................5
`
`A.
`
`The Jury Correctly Concluded that the ’268 Patent Is Invalid..............................5
`1.
`The Transcription Error in Dr. Klopp’s Demonstratives Is Immaterial....8
`2.
`Dr. Klopp Sufficiently Demonstrated a Motivation to Modify
`the PM-465 to Use Elastomeric Couplings .............................................10
`The Court Should Deny Wirtgen’s Motion for RJMOL of Infringement ..........12
`1.
`There Is No Infringement of the “Attachment Element” ........................12
`2.
`There Is No Infringement of the “Alignment” and “Accommodation”
`Elements ..................................................................................................21
`C. Wirtgen is Not Entitled to a New Trial ...............................................................25
`
`B.
`
`V.
`
`CONCLUSION ...............................................................................................................25
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`i
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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 3 of 32 PageID #: 37986
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`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE(S)
`
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015)..........................................................................................11
`Avid Tech. Inc. v. Harmonic Inc., C.A. No. 11-1040-GMS,
`2014 WL 7206301 (D. Del. Dec. 17, 2014), judgment vacated on
`unrelated grounds, 812 F.3d 1040 (Fed. Cir. 2016) ....................................................17, 21
`Bettcher Indus. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011)............................................................................................14
`Branning v. Wayne Cnty., No. 3:15-CV-1936,
`2018 WL 2090807 (M.D. Pa. May 1, 2018) ......................................................................14
`Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc.,
`334 F.3d 1294 (Fed. Cir. 2003)..........................................................................................22
`Conoco, Inc. v. Energy & Envtl. Int’l, L.C.,
`460 F.3d 1349 (Fed. Cir. 2006)..........................................................................................13
`Cordis Corp. v. Boston Sci. Corp.,
`658 F.3d 1347 (Fed. Cir. 2011)..........................................................................................10
`Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
`807 F.2d 955 (Fed. Cir. 1986)..............................................................................................7
`Dome Pat. L.P. v. Lee,
`799 F.3d 1372 (Fed. Cir. 2015)..........................................................................................11
`Enovsys LLC v. Nextel Commc’ns, Inc.,
`614 F.3d 1333 (Fed. Cir. 2010)..........................................................................................13
`Express Mobile, Inc. v. GoDaddy.com, LLC,
`680 F. Supp. 3d 517 (D. Del. 2023) .....................................................................................4
`Freshub, Inc. v. Amazon.com, Inc.,
`93 F.4th 1244 (Fed. Cir. 2024) ..........................................................................................12
`
`Fujifilm Corp. v. Motorola Mobility LLC,
`
`No. 12-CV-03587-WHO, 2015 WL 1265009 (N.D. Cal. Mar. 19, 2015) .........................13
`General Am. Transp. Corp. v. Cryo-Trans, Inc.,
`93 F.3d 766 (Fed. Cir. 1996)..............................................................................................17
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .............................................................................................................5, 8
`
`ii
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 4 of 32 PageID #: 37987
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`
`
`Hewlett–Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003)..........................................................................................13
`
`
`Hoist Fitness Sys., Inc. v. TuffStuff Fitness Int’l, Inc.,
`
`No. ED CV 17-01388-AB(KKx), 2019 WL 6481307 (C.D. Cal. Aug. 27,
`2019), aff’d, 826 F. App’x 916 (Fed. Cir. 2020) ...............................................................18
`
`Intell. Ventures I, LLC v. Motorola Mobility, LLC,
`72 F. Supp. 3d 496 (D. Del. 2014) ................................................................................... 4-5
`Intellectual Ventures I LLC v. Motorola Mobility LLC,
`870 F.3d 1320 (Fed. Cir. 2017)..........................................................................................23
`Johnstech Int’l Corp. v. JF Microtechnology SDN BHD,
`315 F. Supp. 3d 1130 (N.D. Cal. 2018),
`aff’d, 773 F. App’x 623 (Fed. Cir. 2019) ...........................................................................25
`Keller v. Cnty. of Bucks,
`209 F. App’x 201 (3d Cir. 2006) .......................................................................................14
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .........................................................................................................6, 8
`Lightning Lube, Inc. v. Witco Corp.,
`4 F.3d 1153 (3d Cir. 1993)...............................................................................................4, 5
`
`
`Metaswitch Networks Ltd. v. Genband US LLC,
`
`No. 2:14-CV-00744-JRG, 2017 WL 3704760 (E.D. Tex. Aug. 28, 2017)..................17, 18
`
`Moba, B.V. v. Diamond Automation, Inc.,
`325 F.3d 1306 (Fed. Cir. 2003) .........................................................................................18
`Mycogen Plant Sci. v. Monsanto Co.,
`243 F.3d 1316 (Fed. Cir. 2001)..........................................................................................23
`
`
`Orexo AB v. Actavis Elizabeth LLC,
`
`C.A. No. 17-205-CFC, 2019 WL 6728637 (D. Del. Dec. 11, 2019) .................................25
`
`PC Connector Sols. LLC v. SmartDisk Corp.,
`406 F.3d 1359 (Fed. Cir. 2005)..........................................................................................22
`Roche Diagnostics Corp. v. Mesa Scale Diagnostics, LLC,
`503 F. Supp. 3d 156 (D. Del. 2020) .....................................................................................5
`Roebuck v. Drexel Univ.,
`852 F.2d 715 (3d Cir. 1988)...............................................................................................25
`
`
`Singular Computing LLC v. Google LLC,
`
`Civil Action No. 19-12551-FDS, 2023 WL 8810187
`
`(D. Mass. Dec. 20, 2023) ...................................................................................................17
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 5 of 32 PageID #: 37988
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`
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`Solvay S.A. v. Honeywell Int’l. Inc.,
`742 F.3d 998 (Fed. Cir. 2014)............................................................................................13
`Sowers v. R.J. Reynolds Tobacco Co., No. 3:09 C 11829,
`2015 WL 12839776 (M.D. Fla. Feb. 10, 2015) .................................................................24
`
`
`Sportspower Ltd. v. Crowntec Fitness Mfg. Ltd.,
`
`No. 8:17-CV-02032-JLS-KES, 2020 WL 7347860 (C.D. Cal. Nov. 18,
`2020) ..................................................................................................................................18
`
`SRI Int’l v. Matsushita Elec. Corp.,
`775 F.2d 1107 (Fed. Cir. 1985)..........................................................................................22
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011)..........................................................................................24
`Toro Co. v. White Consol. Indus.,
`199 F.3d 1295 (Fed. Cir. 1999)..........................................................................................17
`
`
`United States v. Gilead Scis., Inc.,
`
`C.A. No. 19-2103-MN, 2024 WL 1251282 (D. Del. Mar. 22, 2024) ................................18
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009)..........................................................................................22
`RULES
`Fed. R. Civ. P. 50(a) ........................................................................................................................8
`Fed. R. Civ. P. 50(b) ........................................................................................................................4
`Fed. R. Civ. P. 59 ...........................................................................................................................25
`
`
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`iv
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 6 of 32 PageID #: 37989
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`TABLE OF ABBREVIATIONS
`
`Abbreviation
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`
`
`
`
`EP ’004 patent
`Braud
`Kirschey
`’268 patent
`’659 patent
`EP ’004 patent
`Br.
`
`Caterpillar
`Ex.
`
`JMOL
`POSA
`Trial Ex.
`
`Trial Tr.
`Wirtgen
`
`
`*All emphases herein added, and all internal citations and quotations are omitted unless noted.
`
`Word or Phrase
`European Patent No. 1,875,004
`U.S. Patent No. 5,687,809 (Trial Ex. 4821)
`U.S. Patent No. 5,545,090
`U.S. Patent No. RE48,268 (Trial Ex. 7)
`U.S. Patent No. 8,408,659 (Ex. 1)
`European Patent No. 1,875,004
`Wirtgen’s Opening Brief ISO Motion for
`Judgment as a Matter of Law Pursuant to
`FRCP 50(b) or, in the Alternative, a New
`Trial Pursuant to FRCP 59 (D.I. 377)
`Caterpillar Inc.
`Exhibits attached to the Declaration of XX in
`support of this Opposition
`Judgment as a matter of law
`Person of ordinary skill in the art
`Admitted Trial Exhibits and/or Narrowed
`Trial Exhibits
`Trial Transcripts
`Wirtgen Group (including Wirtgen America
`and Wirtgen GmbH working in concert in
`connection with enforcement activities
`directed towards the asserted patents)
`
`v
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 7 of 32 PageID #: 37990
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`
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`I.
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`INTRODUCTION
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`Wirtgen misused the patent system in obtaining the ’268 patent. Wirtgen should have never
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`filed for the patent, and the patent never should have issued. The ’268 patent is a reissue of the
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`’659 patent (Ex. 1). In the ’659 patent, Wirtgen claimed to invent something that it did not—the
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`use of an isolation mounted engine in a construction machine. In fact, Caterpillar had been using
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`isolation mounted engines on its cold planer construction machines for decades prior to the filing
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`of the application that matured into the ’659 patent. After Caterpillar began selling the accused
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`PM-600/800 cold planers and after Caterpillar confronted Wirtgen with evidence that the ’659
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`patent was invalid over Caterpillar’s 1990s-era PM-565 and PM-465 cold planers, Wirtgen rewrote
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`its patent claims to attack Caterpillar.1
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`The resulting reissued ’268 patent is an obvious gerrymander—one that the jury correctly
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`found failed to avoid Caterpillar’s prior art and failed to cover the accused Caterpillar PM-600/800
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`machines. The ’268 patent did not add anything new to the public domain. At trial, Caterpillar
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`showed that the drivetrain configuration of asserted claim 32 was an obvious variation of existing
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`engine mount technology that Caterpillar developed decades before Wirtgen. Wirtgen failed to
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`identify anything in the patent, its prosecution history, or the prior art that rebutted that case. The
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`jury decided correctly on invalidity based on substantial evidence. Caterpillar’s expert, Dr.
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`Richard Klopp, testified that there is nothing inventive about rearranging a known set of drivetrain
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`components or separating that set into two groups using articulated couplings (whether elastomeric
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`or otherwise). Dr. Klopp explained that rearranging drivetrain components has been a standard
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`part of a mechanic’s toolbox for nearly a century, and that a POSA with knowledge of the prior
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`1 The ’659 patent’s European equivalent—EP ’004—was invalidated in 2020 over Caterpillar’s
`1990s machines. Details of these proceedings are discussed at D.I.s 399 at 6-8; 392 ¶¶ 28-33; and
`368 ¶¶ 4, 8-14.
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 8 of 32 PageID #: 37991
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`art would have been motivated to try any of a wide range of configurations to arrive at the precise
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`arrangement of claim 32. Dr. Klopp’s testimony alone is sufficient to support the jury’s verdict
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`on invalidity, notwithstanding Wirtgen’s specious argument regarding a typographical error in a
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`demonstrative (that the Court has already rejected).
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`The jury also correctly concluded that Caterpillar did not infringe. Wirtgen’s arguments
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`to the contrary constitute an improper attempt to ask the Court to engage in post-trial claim
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`construction that Wirtgen did not ask for before the close of evidence. The infringement testimony
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`presented a classic battle of the experts on which Wirtgen bore the burden of proof. The jury was
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`free to believe Caterpillar’s expert, disbelieve Wirtgen’s, or simply conclude that Wirtgen failed
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`to adduce sufficient evidence to prove its case. Here, the jury rationally could have concluded that
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`Wirtgen failed to prove any of the “alignment,” “attachment,” or “accommodation” elements were
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`met, and any one of these is enough to sustain the verdict.
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`II.
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`FACTUAL BACKGROUND
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`Wirtgen did not invent isolation mounted engines. Trial Tr. at 1120:21-1121:8 (Klopp).
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`Wirtgen did not invent rubber articulated couplings. Id. at 1110:23-1111:11 (Klopp). Isolation
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`mountings and rubber articulated couplings are routine, well-understood engineering techniques
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`that have been in existence for nearly 100 years. Id. Nor did Wirtgen invent using an isolation
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`mounted engine on a cold planer. If anything, that distinction appears to belong to Caterpillar,
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`who has been putting isolation mounted engines in cold planers since the 1990s.2 Those machines
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`(the PM-465/565) had drivetrains divided into two groups separated by an articulated coupling
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`2 If Wirtgen used isolation mounted engines before Caterpillar, it did not offer any evidence of that
`fact at trial. The sole testimony on this subject came from Jan Schmidt, who testified that isolation
`mounting was first used on the W-210. Trial Tr. at 325:10-326:10 (Schmidt). No one testified at
`trial that the W-210 was available on the market in 1992 when the PM-465 was first released.
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`2
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 9 of 32 PageID #: 37992
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`with soft engine mounts for the purpose of reducing engine vibration, and firmer mounts for the
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`pulley drive. See Trial Tr. at 493:11-494:7 (Engelmann); id. at 1116:22-1119:2 (Klopp).
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`Nevertheless, Wirtgen tried to claim credit for the innovation and tried to patent it. See
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`’268 patent. In 2011, Wirtgen filed the application for the ’659 patent. See id. at .0002; 1:16-18.
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`The patent described an apparatus for improving operator comfort by reducing engine vibration in
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`a cold planer. ’659 patent at 2:10-15. In sum, the patent purported to disclose an invention wherein
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`the “elements of the drivetrain are divided into at least a first subset and a second subset,” with the
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`first subset containing “at least” the “drive engine” and the second subset containing “at least” the
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`drive element of the traction mechanism. Id. at 7:25-8:12 (’659 claim 14). The two subsets are
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`then joined with an “articulated coupling.” Id. This, the patent said, makes it possible to attach
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`the first subset with soft mounts (to reduce vibration), while attaching the second subset to the
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`frame in a “rigid manner” (to provide mechanical power). Id. at 2:55-59. The patent broadly
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`describes a range of different possible configurations of the drivetrain components (such as the
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`pump drive and clutch), all of which are embodiments of the claimed invention. See id. at Figs.
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`1-5, 3:62-5:65 (describing various embodiments). The ’659 patent does not identify any
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`performance differences among the embodiments or advantages of any one configuration. The
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`patent says the opposite: “it is to be understood that minor variations may be made in the apparatus
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`without departing from the spirit and scope of the invention.” Id. at 6:15-19.
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`Caterpillar released the PM-600/800 cold planers in the spring of 2016. See Trial Tr. at
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`369:3-8 (Engelmann). A year later, Wirtgen filed this case and initiated proceedings in the ITC
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`and in Italian court. D.I. 1; D.I. 368 ¶ 10; D.I. 392 ¶¶ 11-15, 28-33. Although Wirtgen asserted
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`the ’659 patent’s European equivalent (EP ’004) in Italy, it did not assert the ’659 patent here or
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`in the ITC. The Italian court invalidated that European patent based on Caterpillar’s PM-465/565.
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`3
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 10 of 32 PageID #: 37993
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`Rather than admit that it had not invented anything, Wirtgen misused the patent reissue
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`process to target Caterpillar. Wirtgen disclosed Caterpillar’s prior art machines and the results of
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`the Italian proceedings to the Patent Office. Wirtgen also added several limitations that
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`purportedly narrowed the claims and differentiated them from the prior art while still (Wirtgen
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`hoped) covering the Caterpillar PM600/800 cold planers that were on sale prior to its submission
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`of the reissue claims. ’268 patent at 9:33-44 (additions to claim 14), 10:54-60 (additions to claim
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`32); see Trial Tr. at 870:25-871:3 (Rahn) (“Q. And you said what happened was Wirtgen figured
`
`out about the PM-465 and 565 prior art machine and had to narrow down the claims? A. That’s
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`my understanding, yes.”); id. at 1118:11-1119:2 (Klopp). In so doing, Wirtgen dropped its claims
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`covering all drivetrain configurations except the one that Wirtgen hoped it could assert against
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`Caterpillar. Neither the original patent nor the reissued patent specification contains any
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`explanation why that drivetrain arrangement is advantageous over any other configurations found
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`in the patent or the prior art. See ’268 patent at 4:15-6:55 (discussing each embodiment).
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`Tellingly, at trial, Wirtgen offered no fact witness testimony about the “invention” process or the
`
`benefits of that particular configuration from the prosecution history. Wirtgen did not even bring
`
`the purported inventors to trial.
`
`III. LEGAL STANDARD
`
`“Under Federal Rule of Civil Procedure 50(b), JMOL is proper only if ‘viewing the
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`evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and
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`reasonable inference, there is insufficient evidence from which a jury reasonably could find’ for
`
`the nonmovant.” Express Mobile, Inc. v. GoDaddy.com, LLC, 680 F. Supp. 3d 517, 524 (D. Del.
`
`2023) (quoting Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993)). Courts in
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`the Third Circuit must consider “whether there is evidence upon which the jury could properly
`
`find for the non-moving party.” Intell. Ventures I, LLC v. Motorola Mobility, LLC, 72 F. Supp. 3d
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`4
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 11 of 32 PageID #: 37994
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`
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`496, 502 (D. Del. 2014). When evaluating a motion for JMOL, “the court may not weigh the
`
`evidence, determine the credibility of witnesses, or substitute its version of the facts for the jury’s
`
`version.” Lightning Lube, 4 F.3d at 1166.
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`“[A] new trial should only be granted when a ‘miscarriage of justice would result if the
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`verdict were to stand,’ the verdict ‘cries out to be overturned,’ or the verdict ‘shocks [the]
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`conscience.’” Roche Diagnostics Corp. v. Mesa Scale Diagnostics, LLC, 503 F. Supp. 3d 156,
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`166 (D. Del. 2020).
`
`IV. ARGUMENT
`A.
`
`The Jury Correctly Concluded that the ’268 Patent Is Invalid
`
`There was more than sufficient evidence to support the jury’s conclusion that the ’268
`
`patent was obvious. The jury heard extensive testimony showing that the use of articulated
`
`couplings (whether elastomeric or otherwise) and rearrangement of drivetrain components were
`
`routine, well-understood, and not innovative.
`
`Dr. Klopp performed a proper and complete obviousness analysis. See Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). He applied the Graham factors, concluded
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`that they favored a finding of obviousness, and determined that a POSA would be motivated to
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`modify the PM-465 in light of other prior art references—such as Braud and Kirschey—to arrive
`
`at the subject matter of claims 14 and 32. See Trial Tr. at 1119:19-1123:12 (Klopp).
`
`As Dr. Klopp put it at trial, the purported invention was “old news.” Id. at 1098:19-25
`
`(Klopp); accord id. 1100:6-17 (Klopp) (moving around components of the drivetrain was “not at
`
`all” “a new idea”). Caterpillar had been using isolation mounted engines in cold planers for nearly
`
`20 years when Wirtgen filed for the original patent application. See id. at 1118:11-1119:2 (Klopp);
`
`see also id. at 493:11-494:9 (Engelmann). Dr. Klopp explained that merely rearranging the
`
`components of a drivetrain (i.e., from the PM-465 configuration to the claimed configuration) was
`
`5
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 12 of 32 PageID #: 37995
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`
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`not inventive. See Trial Tr. at 1110:10-22 (Klopp) (“Even in 1917, technical engineers knew to
`
`move gear boxes around and put articulated couplings between them and locate things to meet
`
`their needs.”). These different arrangements were “textbook-type” tools that any mechanical
`
`engineer would know (and be motivated) to attempt. See id. at 1109:7-13, 1121:12-23, 1120:5:9
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`(describing the modification as “trivial”); see also id. at 1112:12-21 (Klopp) (“So Braud teaches
`
`that it gives us a motivation as to why you would want to essentially relocate the clutch[.]”); id. at
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`1114-15 (Klopp) (describing moving the clutch to a place “where it’s a lot more accessible” as a
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`motivation). In other words, Dr. Klopp showed—and the jury agreed—that the differences
`
`between the PM-465 and claims 14/323 are a classic example of known, finite, and predictable
`
`solutions that render claims obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
`
`(“When there is a design need or market pressure to solve a problem and there are a finite number
`
`of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known
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`options within his or her technical grasp.”); see also Trial Tr. at 1100:6-17 (Klopp) (reducing
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`vibration transmission was a longstanding known design need).
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`Importantly, Dr. Klopp discussed the Braud prior art reference which expressly disclosed
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`a drivetrain arrangement where the engine was isolated from all other components of the drivetrain
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`(mirroring claim 32). See Trial Tr. at 1112:9-21 (Klopp testifying that Braud’s engine “is by itself
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`hanging off the side of the frame” and separated from the rest of drivetrain by “an articulated
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`coupling”). This is depicted in the following annotated version of Braud, Fig. 2, which Dr. Klopp
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`showed the jury:
`
`
`3 At trial, Wirtgen only asserted Claim 32, which depends on Claim 14.
`
`6
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`

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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 13 of 32 PageID #: 37996
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`
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`Id. (yellow engine separated from rest of drivetrain via green articulated coupling). A POSA is
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`presumed to have been fully aware of such engine-isolation arrangements. See Custom
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`Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of
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`ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.”).
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`Wirtgen offered no meaningful response to this testimony. Dr. Rahn’s rebuttal testimony
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`on invalidity lasted less than five minutes. See Trial Tr. at 1891:21-1892:16, 1895:24-1897:15
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`(Rahn). Dr. Rahn did not dispute key points that Dr. Klopp raised, including that Caterpillar had
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`used isolation mounted engines for decades; that mechanical engineers have used wide ranges of
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`drivetrain configurations for a century; and that a POSA would have viewed the changes in the
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`organization of this drivetrain as “trivial.”4 Dr. Rahn also repeatedly misstated that the Patent
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`Office had already considered the PM-465/565 machines, which is incorrect: the Patent Office
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`never had the machines available to it, but instead only certain manuals. And Dr. Rahn made no
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`effort to show that these manuals fully described the drivetrain. See Trial Tr. at 1892:2-19,
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`1895:24-1896:2, 1903:20-24 (Rahn). Further, while Dr. Rahn opined that the ’268 patent was
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`inventive, the jury was free to disbelieve that testimony and agree with Dr. Klopp. See Trial Tr.
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`4 Indeed, he only contested whether a POSA would have been motivated to rearrange this
`drivetrain. See Trial Tr. at 1896:9-1897:15 (Rahn). Wirtgen does not argue that the jury was
`within its province to credit Dr. Klopp on that issue.
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`7
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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 14 of 32 PageID #: 37997
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`at 1654:24-1655:3 (during Rule 50(a) JMOL arguments, the Court noting that it must
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`“acknowledge and address [] the possibility the jury is going to disbelieve” a witness). That is
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`particularly so because the patent itself contradicts his claims; it says nothing about reducing wear
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`and tear or minimizing the size of the “mass” on the soft mountings. Compare ’268 patent with
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`Trial Tr. at 827:7-828:12 (Rahn). Neither of Wirtgen’s specific arguments has any merit.
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`1.
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`The Transcription Error in Dr. Klopp’s Demonstratives Is Immaterial
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`The Court has already heard and rejected Wirtgen’s argument about the transcription error
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`in Dr. Klopp’s demonstratives, which Wirtgen raised in its Rule 50(a) Motion. See Trial Tr. at
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`1938:9-1940:4, 1940:24-1942:3, 1942:23-1944:24. Wirtgen’s attempt to revisit that issue misses
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`the point. In an obviousness analysis, four factors are considered: (1) “the scope and content of
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`the prior art,”; (2) “differences between the prior art and the claims at issue”; (3) “the level of
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`ordinary skill in the pertinent art resolved”; and (4) “secondary considerations.” KSR Int’l., 550
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`U.S. at 406. There is ample evidence from Dr. Klopp’s testimony on which the jury could have
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`found obviousness based on these factors.
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`There is no dispute as to Graham factors (1), (3), and (4). Dr. Klopp correctly described
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`the scope and content of the relevant prior art—specifically, the PM-465 and Braud. He explained
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`how the PM-465 had each of claim 32’s drivetrain components, including the engine, hydraulic
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`pump drive, clutch, and drive pulley. Compare ’268 patent at 9:22-27 (’268 patent claim 14 listing
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`subset requirements to include hydraulic pump drive, clutch, and drive pulley) with Trial Tr. at
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`1085:4-1086:6 (Klopp) (testifying that PM-465 has each such component); see id. at 1943:23-
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`1944:1 (Wirtgen’s counsel agreeing that Dr. Klopp “did identify each of those elements”). He also
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`correctly testified that the PM-465 had both a “first subset” and a “second subset” separated by an
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`articulated coupling. See id. at 1085:4-1086:6, 1113:19-1115:1, 1117:1-1118:10. Finally, he
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`explained that it was known in the prior art (such as Braud) to have a drivetrain that—just as claims
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`8
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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 15 of 32 PageID #: 37998
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`14/32 require—places the engine in one subset and every other drivetrain component in a second
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`subset. See id. Dr. Klopp correctly described the level of ordinary skill in the art. As discussed
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`supra, Dr. Klopp explained how a POSA would have had within his or her toolbox the knowledge
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`to try various known and finite arrangements of the drivetrain components. See id. at 1109:7-13,
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`1121:12-23, 1120:5:9 (describing the modification as “trivial”). Finally, Dr. Klopp also addressed
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`secondary considerations, finding that there were none applicable to the ’268 patent. Id. at
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`1122:13-1123:2.
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`Wirtgen’s only argument is to factor (2). But Dr. Klopp did not analyze the “wrong claim
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`language.” (Cf. Br. at 20.) Rather there was ample evidence that Dr. Klopp considered and
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`discussed the correct claim language, notwithstanding the error. E.g., Trial Tr. 1099:24-1100:1.
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`Most significantly, Dr. Klopp explained that based on the PM-465 and Braud, a POSA would have
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`found it obvious to modify the prior art to arrive at the configuration described in the patent:
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`Q. Would your overall conclusion after considering all those factors including
`secondary considerations that the patent was -- I guess if we could put up slide 90
`again. And Dr. Klopp, do you see we have checked this last element here. I think
`we talked about this last element?
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`A. Yes. By doing that obvious swap in the drive line of the pump driver and clutch
`with the articulated coupling then you end up with the pump drive, clutch, drive
`pulley altogether supported as a combined subset and that subset is rigidly
`attached to the machine frame.
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`Trial Tr. at 1123:3-12 (Klopp); see also id. at 1099:24-1100:1 (stating that Dr. Klopp reviewed the
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`’268 patent). In other words, Dr. Klopp correctly described modifying the PM-465 to arrive at a
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`drivetrain configuration in which the pump drive, clutch, and drive pulley are one combined
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`subset—precisely as claims 14/32 require. Dr. Klopp also depicted the differences between the
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`PM-465 and the claims via demonstratives that are fully consistent with the claim language:
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`9
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`Case 1:17-cv-00770-JDW Document 407 Filed 06/07/24 Page 16 of 32 PageID #: 37999
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`Dr. Klopp’s demonstrative for PM-465 configuration (left) vs. claims 14/32 of ’268 (right)
`Indeed, Dr. Klopp testified at length on why modifying the PM-465 to arrive at the claim language
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`
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`would have required only the exercise of trivial skill by a POSA. See Trial Tr. at 1110:10-22
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`(Klopp) (“Even in 1917, technical engineers knew to move gear boxes around and put articulated
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`couplings between them and locate things to meet their needs”), id. at 1109:7-13, 1121:12-23,
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`1120:5:9 (describing the modification as “trivial”).
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`More generally, Wirtgen misunderstands Dr. Klopp’s opinion. Dr. Klopp’s opinion is not
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`just that the specific engine configuration described in the ’268 patent is obvious. As described
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`above, his opinion is that as a general matter, there is nothing innovative about rearranging
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`drivetrain components. An error in the description of the specific configuration described in the
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`patent is simply immaterial. The substance of the testimony supplied a more than sufficient basis
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`for the jury to conclude that the particular drivetrain configuration of the ’268 patent was obvious.5
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`2. Dr. Klopp Sufficiently Demonstrated a Motivation to Modify the PM-
`465 to Use Elastomeric Co