Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 1 of 26 PageID #: 38028
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Defendant.
`DECLARATION OF CHRISTOPHER D. MAYS IN SUPPORT OF
`CATERPILLAR INC.’S OPPOSITION TO WIRTGEN AMERICA’S MOTION
`FOR ENHANCED DAMAGES, ATTORNEYS’ FEES, INJUNCTION OR
`ONGOING ROYALTIES, AND OTHER RELIEF
`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
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`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: May 24, 2024
`11524918/11898.00005
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`
`
`)))))))))
`
`Attorneys for Defendant Caterpillar Inc.
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 2 of 26 PageID #: 38029
`
`IN THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW-MPT
`
`
`JURY TRIAL
`
`
`
`))))))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant/Counterclaim-Plaintiff.
`
`DECLARATION OF CHRISTOPHER D. MAYS IN SUPPORT OF CATERPILLAR
`INC.’S OPPOSITION TO WIRTGEN AMERICA’S MOTION FOR ENHANCED
`DAMAGES, ATTORNEYS’ FEES, INJUNCTION OR ONGOING ROYALTIES, AND
`OTHER RELIEF
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 3 of 26 PageID #: 38030
`
`I, Christopher D. Mays, declare as follows:
`
`1.
`
`In opposing Wirtgen’s Motion for enhanced damages, permanent injunction, and
`
`other relief, Caterpillar refers to several tribunals and proceedings, including two ITC
`
`investigations, multiple importation proceedings before the Customs and Border Protection
`
`(“Customs”), several inter partes review proceedings before the United States Patent and
`
`Trademark Office, patent litigation disputes both in the United States and in Italy, and other
`
`proceedings involved in the parties’ global dispute. This Declaration is offered to facilitate the
`
`Court’s review of relevant portions of the record and evidence in these various proceedings.
`
`2.
`
`I am an attorney at law duly licensed to practice in the State of California and before
`
`this Court. I am an associate at the law firm of Wilson Sonsini Goodrich and Rosati, P.C. and an
`
`attorney of record for Defendant Caterpillar Inc. (“Caterpillar”) in the above-captioned matter. I
`
`provide this declaration in support of Caterpillar’s Opposition to Wirtgen America’s Motion for
`
`Enhanced Damages, Attorneys’ Fees, Injunction or Ongoing Royalties, and Other Relief. Unless
`
`otherwise indicated below, the statements in this declaration are based on my personal knowledge
`
`and my review of the documents cited herein. If called to testify as a witness, I could and would
`
`competently do so under oath. I am also a patent attorney licensed to practice before the United
`
`States Patent and Trademark Office. I have been a licensed patent attorney since 2009 and was
`
`also a patent agent before that.
`
`I.
`
`CATERPILLAR OBTAINED PATENTS OVER THE ’641 AND ’309 PATENTS
`
`A.
`
`3.
`
`Caterpillar’s ’688 Patent Was Allowed Over the ’309 Patent
`
`Attached hereto as Exhibit 30 is a true and correct copy of Trial Exhibit 6083,
`
`which is United States Patent No. 8,973,688 (“Caterpillar’s ’688 Patent”). This exhibit lists the
`
`named inventor as Craig Steffen.
`
`- 1 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 4 of 26 PageID #: 38031
`
`4.
`
`Below is a true and correct excerpt from the cover page of Caterpillar’s ’688 Patent
`
`listing the ’309 Patent in the “References Cited” section:
`
`5.
`
`Below is a true and correct excerpt from the file history of Caterpillar’s ’688 Patent
`
`that is an Information Disclosure Statement (“IDS”) Caterpillar submitted to the Patent Office in
`
`the ’688 Patent’s application listing the ’309 Patent:
`
`- 2 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 5 of 26 PageID #: 38032
`
`6.
`
`Below is a true and correct excerpt from the file history of Caterpillar’s ’688 Patent
`
`stating that Examiner Maurice Williams considered the ’309 Patent before the ’688 Patent issued:
`
`B.
`
`7.
`
`Caterpillar’s ’194 Patent Was Allowed over the ’641 Patent.
`
`Attached hereto as Exhibit 7 is a true and correct copy of Trial Exhibit 6081, which
`
`is United States Patent No. 8,888,194 (“Caterpillar’s ’194 Patent”). The inventor listed on the
`
`front page is Dan Killion. At trial, Caterpillar’s Eric Engelmann testified that Caterpillar’s ’194
`
`Patent contains Caterpillar’s design for its Rotor Drum Exposure feature. See Trial Tr. 520:20-23
`
`(“Q. Could you describe the general area of the technology of this patent? A. This patent related
`
`to our reverse rotor shut off or the rotor exposed in the reverse areas of the machine.”).
`
`- 3 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 6 of 26 PageID #: 38033
`
`8.
`
`Below is a true and correct excerpt from the front page of Caterpillar’s ’194 Patent
`
`listing the ’641 Patent in the “References Cited” section:
`
`9.
`
`In the above excerpt, the asterisk next to the ’641 Patent is listed as “cited by
`
`examiner.”
`
`II.
`
`CATERPILLAR’S SUCCESSFUL DEFENSES AGAINST WIRTGEN
`
`10.
`
`The following table summarizes the result of every claim that Wirtgen has asserted
`
`at any point in the parties’ global litigation:
`
`Patent
`
`’309
`
`Asserted
`Claims12
`1-3, 5-36
`
`’316
`
`1-20
`
`TABLE 1: SUMMARY OF RESULTS
`
`Caterpillar Successes
`
` Claims 1-3, 5-9, 11-16, 21-24, 26-28, 33-36:
`Unpatentable (IPR). See D.I. 369-12 at 3-4.
` Claim 10: No infringement (ITC). See
`D.I. 226-44 at 436.
` Claims 17-20, 25, 30-32: Dropped.
` Claim 36: Invalid (ITC). Ex. 24 at 3.
` All Asserted Claims: Dropped.
`
`Claims
`Found
`Infringed
`
`29
`
`N/A
`
`1 All references to “Ex.” are to the exhibits attached to the Declaration of Christopher Mays in support of
`Caterpillar’s brief in opposition to Wirtgen America’s Motion for Enhanced Damages, Attorneys’ Fees, Injunction
`or Ongoing Royalties, and Other Relief, filed concurrently herewith.
`2 D.I. 1 (Original Complaint); D.I. 33 (Amended Complaint); D.I. 383-12, Ex. L; D.I. 383-10, Ex. J.
`
`- 4 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 7 of 26 PageID #: 38034
`
`Patent
`
`’641
`
`Asserted
`Claims12
`1, 2, 4, 6-8,
`11, 12, 15-
`19
`
`’592
`
`’871
`
`’530
`’395
`
`’788
`
`’932
`
`’474
`
`’628
`
`’340
`
`’268
`
`’972
`
`1, 2, 5-15,
`18-22
`1, 2, 5-15,
`18-35
`1-26, 28
`1, 3, 6, 8,
`10, 11, 13,
`16, 17, 19,
`20, 22, 24,
`26, 27
`1, 3, 5-8,
`10-15, 17,
`19
`1, 2, 6, 9-12,
`14, 17
`1-3, 6-8, 10-
`12, 15, 17,
`19-22, 24,
`26-28, 31,
`33
`1, 2, 5, 6, 9-
`22, 27-29
`1-5, 7-12,
`14-17
`
`1-3, 6-8, 10,
`14, 18, 19,
`22-35, 38-
`45
`
`1-10, 12-16,
`22, 25-27,
`30-33, 36-
`40
`
`Caterpillar Successes
`
` Claims 1, 2, 4, 6-8: Invalid (ITC). See
`D.I. 226-44 at 436.
` Claim 11: Initially found not infringed. See
`Caterpillar Prodotti Stradali S.R.L. v. Int’l Trade
`Comm’n, 847 F. App’x 893, 899-900 (Fed. Cir. 2021).
` Claims 12, 15, 16, 18, 19: Dropped.
` Claim 17: MSJ of no infringement. See
`D.I. 272 at 12-14.
` All Asserted Claims: Dropped.
`
` All Asserted Claims: Dropped.
`
` Claims 1-4, 6-26, 28: Dropped.
` All Asserted Claims: Invalid (IPR). See D.I. 226-50
`at 2.
`
` Claims 1, 3, 6-8, 10-15, 17, 19: Dropped.
`
` All Asserted Claims: Dropped.
`
` All Asserted Claims: Dropped.
`
` All Asserted Claims: Invalid (IPR). See Ex. 25 at 3.
`
` All Asserted Claims: Invalid (IPR). See D.I. 226-48
`at 3.
` Claims 4, 5, 9, 12: Invalid (ITC). See D.I. 226-44 at
`438.
` Claims 1-3, 6-8, 10, 14, 18, 19, 22-31, 33-35, 38-45:
`Dropped.
` Claim 32: Found invalid and not infringed by jury.
`
` Claims 1-10, 14-16, 22, 25-27, 30-33, 36-40: Invalid
`(IPR). See D.I. 381-2, Ex. 2 at 2; D.I. 381-1, Ex. 1 at
`2.
`
`Claims
`Found
`Infringed
`
`11
`
`N/A
`
`N/A
`5, 22
`
`N/A
`
`5
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`32
`
`12
`
`- 5 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 8 of 26 PageID #: 38035
`
`Patent
`
`Asserted
`Claims12
`
`’390
`’391
`
`1-8, 10
`1-20
`
`Caterpillar Successes
`
` Claim 13: Found not infringed by jury
` All Asserted Claims: Invalid (IPR). See Ex. 26 at 2.
` All Asserted Claims: Invalid (IPR). See Ex. 27 at 3.
`
`Claims
`Found
`Infringed
`
`N/A
`N/A
`
`A.
`
`ITC Successes
`
`11. Wirtgen originally asserted U.S. Patent No. 9,624,628 against Caterpillar.
`
`However, attached hereto as Exhibit 21 is a true and correct copy of a March 15, 2018 letter from
`
`C. Lehman to D. Yonan re U.S. Patent No. 9,624,628 (“the ’628 Patent”) In the Matter of Certain
`
`Road Milling Machines and Components Thereof, Case No. 337-TA-1067 investigation. In this
`
`letter, Mr. Lehman alleges that the ’628 Patent is unenforceable. Also, attached hereto as Exhibit
`
`22 is a true and correct copy of the March 21, 2018 response from D. Yonan to Mr. Lehman
`
`agreeing to drop Wirtgen’s allegations for the ’628 Patent.
`
`12.
`
`Docket Entry D.I. 226-44 is a true and correct copy of the public version of the
`
`Final Initial Determination from ALJ David P. Shaw of the United States International Trade
`
`Commission In the Matter of Certain Road Milling Machines and Components Thereof, ITC
`
`Investigation No. 337-TA-1067 (“the ’1067 ITC Investigation”) dated October 31, 2018. Pages
`
`435 through 438 list the ALJ’s Conclusions of Facts and Law. ALJ Shaw made, inter alia, the
`
`following conclusions:
`
`
`
`
`
`
`
`“14) Wirtgen has not shown that the PM620 machine infringes claim 10 of the ’309 Patent.”
`
`“18) Caterpillar has not shown, through clear and convincing evidence, that the asserted
`claims of the ’309 Patent are invalid under 35 U.S.C. §§ 102 or 103.”
`
`“19) Caterpillar has shown that claims 1 and 7 of the ’641 Patent are indefinite because the
`‘monitoring device’ paragraph is claimed functionally, and thus subject to 35 U.S.C. §
`112(6). The specification does not disclose adequate corresponding structure to perform
`all of the claimed functions, nor does the specification sufficiently disclose algorithms for
`all of the claimed functions.”
`
`- 6 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 9 of 26 PageID #: 38036
`
`
`
`
`
`
`
`“23) Wirtgen has not shown that Caterpillar's customers have used a PM300 series product
`in the United States. Thus, Wirtgen has not shown that Caterpillar's customers directly
`infringe claims 11 and 17 of the ’641 Patent.”
`
`“24) Wirtgen has not shown that Caterpillar induces its customers to infringe the asserted
`claims of the ’641 Patent.”
`
`“37) Caterpillar has shown, through clear and convincing evidence, that claims 4, 5, 9, and
`12 of the ’340 Patent would have been obvious in light of the PM-565.”
`
`13.
`
`Attached hereto as Exhibit 3 is a true and correct copy of the Notice of Commission
`
`Determination to Review in Part a Final Initial Determination; Schedule for Filing Written
`
`Submissions on Remedy; The Public Interest, and Bonding In the Matter of Certain Road Milling
`
`Machines and Components Thereof, Case No. 337-TA-1067, dated April 17, 2019. On page 2 of
`
`this Exhibit, the Commission modified ALJ Shaw’s Final Initial Determination by amending
`
`Conclusion 18 (quote above) to find that Caterpillar successfully showed that claim 36 of the ’309
`
`Patent is invalid as obvious. See id. at 2.
`
`14.
`
`Attached hereto as Exhibit 24 is a true and excerpted copy of the Commission
`
`Opinion In the Matter of Certain Road Milling Machines and Components Thereof, Inv. No. 337-
`
`TA-1067, dated July 18, 2019.
`
`15.
`
`Attached hereto as Exhibit 29 is a true and correct copy of a March 15, 2021,
`
`Federal Circuit Opinion issued on the various appeals of the ’1067 ITC Investigation. (Trial Ex.
`
`2332, Caterpillar Prodotti Stradali S.R.L. v. ITC, 19-2445 [83] Opinion (Fed. Cir. Mar. 15, 2021)).
`
`In that Opinion, the Federal Circuit reversed the finding of noninfringement as to Claims 11 and
`
`17 of the ’641 Patent, but only as to the PM600 and PM800 series. The Federal Circuit affirmed
`
`the finding of non-infringement as to the PM300 series. Id. at 12-14.
`
`B.
`
`16.
`
`Caterpillar’s Patent Office Successes
`
`Attached as Exhibit 2 is a true and correct copy of the Final Written Decision in
`
`the Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185-51
`
`- 7 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 10 of 26 PageID #: 38037
`
`regarding U.S. Patent No. 7,828,309, dated July 17, 2019. As shown in this Exhibit at pages 3-4,
`
`the Patent Office found claims 1-3, 5-9, 11-16, 21-24, 26-28, 33-36 to be unpatentable.
`
`17.
`
`D.I. 226-48, Ex. 48 is a true and correct copy of the Final Written Decision in the
`
`Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02187-42 regarding
`
`U.S. Patent No. 9,644,340, dated May 21, 2019. At page 3, the Patent Office found all challenged
`
`claims of the ’340 Patent to be unpatentable.
`
`18.
`
`Attached hereto as Exhibit 25 is a true and excerpted copy of the Final Written
`
`Decision in the Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2018-
`
`00155-13 regarding U.S. Patent No. 9,624,628, dated May 22, 2019. As shown in this Exhibit at
`
`page 3, the Patent Office found all challenged claims to be unpatentable.
`
`19.
`
`D.I. 226-50, Ex. 50 is a true and correct copy of the Final Written Decision in the
`
`Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2018-01091-49 regarding
`
`U.S. Patent No. 8,308,395, dated November 27, 2019. As shown in this Exhibit at page 2, the
`
`Patent Office found all challenged claims to be unpatentable.
`
`20.
`
`Attached hereto as Exhibit 26 is a true and excerpted copy of the Final Written
`
`Decision in the Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2022-
`
`01264-31 regarding U.S. Patent No. 9,879,390, dated January 22, 2024. As shown in this Exhibit
`
`at page 2, the Patent Office found all challenged claims to be unpatentable.
`
`21.
`
`Attached hereto as Exhibit 27 is a true and excerpted copy of the Final Written
`
`Decision in the Inter Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2022-
`
`01277-30 regarding U.S. Patent No. 9,879,391, dated January 29, 2024. As shown in this Exhibit
`
`at page 3, the Patent Office found all challenged claims to be unpatentable.
`
`- 8 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 11 of 26 PageID #: 38038
`
`22.
`
`D.I. 381-2, Ex. 2 is a true and correct copy of the Final Written Decision in the Inter
`
`Partes Review in the Caterpillar Inc. v. Wirtgen America, Inc., IPR2022-01278-34 regarding U.S.
`
`Patent No. 8,424,972, dated February 6, 2024. Also, D.I. 381-1, Ex. 1 is a true and correct copy
`
`of the Final Written Decision in the Inter Partes Review in the Caterpillar Inc. v. Wirtgen America,
`
`Inc., IPR2022-01310-34 regarding U.S. Patent No. 8,424,972, dated February 6, 2024. Between
`
`these two exhibits, the Patent Office found Claims 1-10, 14-16, 22, 25-27, 30-33, and 36-40 of the
`
`’972 Patent to be Unpatentable over inter alia, Caterpillar’s PM-465 Operation & Maintenance
`
`Manual. See D.I. 381-2, Ex. 2 at 2, 7 n.2; D.I. 381-1, Ex. 1 at 2, 7 n.2.
`
`C.
`
`23.
`
`Successes in this Litigation
`
`On January 4, 2024, the Court issued a Memorandum Opinion on the parties’
`
`motions for summary judgment. Dkt. 272. The Court denied Wirtgen’s Motions for Summary
`
`Judgment on Infringement as to the ’530, ’309, ’641 and Patents. Dkt. 272 at 7-14. The Court
`
`granted Caterpillar’s Motion for Summary Judgment of Non-Infringement as to Claim 17 of the
`
`’641 Patent. Id. at 12-14.
`
`24.
`
`On January 16, 2024, the Court issued a Memorandum Opinion on Caterpillar’s
`
`Daubert motion on Wirtgen’s technical experts. Dkt. 283. The Court granted Caterpillar’s motion
`
`to exclude certain infringement theories from Wirtgen’s ’641 technical expert.
`
`25.
`
`On February 5, 2024, the Court issued a Memorandum Opinion granting
`
`Caterpillar’s Daubert motion on Wirtgen’s damages expert. Dkt. 308. The Court stated that
`
`Wirtgen’s damages expert “fails to apportion to ensure that Wirtgen would receive only the benefit
`
`of its patented technologies in her damages analysis, Dr. Seth’s analysis runs afoul of governing
`
`Federal Circuit precedent and requires exclusion.” Id. at 12.
`
`- 9 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 12 of 26 PageID #: 38039
`
`26.
`
`At trial, the jury found non-infringement of claim 13 of the ’972 Patent; and both
`
`non-infringement and invalidity of the ’268 Patent. See Dkt. 346. The jury also awarded slightly
`
`less than $13 million in damages. See id.
`
`27.
`
`In Wirtgen’s Opening Statement at trial, it requested $69 million in damages. See
`
`Trial Tr. at 157:1-5 (Wirtgen’s counsel stating “Now, we are going to be asking for $69 million.”)
`
`D.
`
`Caterpillar’s Success in the Italian Litigation
`
`28. Wirtgen and Caterpillar were also engaged in litigation in Milan, Italy. That
`
`litigation involved, inter alia, European Patent No. 1,875,004 (“the European ’004 Patent”).
`
`Below is a true and correct excerpt from the front page of the European ’004 Patent listing
`
`International Application PCT/EP2006/060907:
`
`29.
`
`Below is a true and correct excerpt from the front page of the ’268 Patent listing
`
`the same International Application PCT/EP2006/060907:
`
`- 10 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 13 of 26 PageID #: 38040
`
`30.
`
`D.I. 369-21 at WA-0013562 to WA-0013709 is a true and correct excerpt from the
`
`’268 Patent’s file history that includes a Final Opinion from Mr. Paulo Piovesana, a neutral court-
`
`appointed engineer technical expert in the Milan action.
`
`31.
`
`At page WA-0013708 of his Final Opinion, Mr. Piovesana states the following:
`
`32.
`
`At page WA-0013645 of his Final Opinion, Mr. Piovesana states the following:
`
`33.
`
`At page WA-0013650 of his Final Opinion, Mr. Piovesana states the following:
`
`- 11 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 14 of 26 PageID #: 38041
`
`III.
`
`CATERPILLAR’S CONDUCT BEFORE CUSTOMS
`
`A.
`
`34.
`
`Customs Proceedings Re ’309 and ’530 Redesigns
`
`Attached hereto as Exhibit 1 is a true and correct copy of an October 14, 2020
`
`letter from J. Barney to the U.S. Customs and Border Protection In the Matter of Certain Road
`
`Milling Machines and Components Thereof, Case No. 337-TA-1067. In this Exhibit, Caterpillar
`
`requested permission to resume importing PM-600 and PM-800 machines following design
`
`changes related to the ITC’s finding on the ’309 and ’530 Patents. In this Exhibit at 13,
`
`Caterpillar stated inter alia:
`
`- 12 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 15 of 26 PageID #: 38042
`
`
`
`“In addition to the evidence cited and relied on in this section, Caterpillar agrees to make
`an Updated Machine available for inspection by Wirtgen, subject to the terms of a
`nondisclosure agreement.”
`
`35.
`
`Attached hereto as Exhibit 4 is a true and correct copy of an April 2, 2021 letter
`
`from J. Barney to U.S. Customs and Border Protection In the Matter of Certain Road Milling
`
`Machines and Components Thereof, Case No. 337-TA-1067 regarding the same Customs
`
`proceedings pertaining to the ’309 and the ’530 Patent redesigns. In this Exhibit, Caterpillar
`
`stated inter alia:
`
` Caterpillar “produced the types of manuals and documents routinely created for its road-
`milling machines, such as parts manuals, operation and maintenance manuals, service and
`training manuals, systems manuals, software specifications, electrical schematics, and
`hydraulic schematics.”
`
` Caterpillar “even produced the source code for the Updated Machine, which Wirtgen’s
`source-code expert reviewed for two days.”
`
` Caterpillar “also made an Updated Machine available for inspection, and Wirtgen
`inspected that machine with its technical expert witness. Caterpillar then allowed Wirtgen
`to depose the engineering manager who oversaw the design and manufacture of the
`Updated Machines, which it did.”
`
`Id. at 1.
`
`36.
`
`Attached hereto as Exhibit 6 is a true and correct copy of a May 19, 2021, letter
`
`from U.S. Customs and Border Protection to J. Barney for Caterpillar Inc. regarding Ruling
`
`Request and Limited Exclusion Order In the Matter of Certain Road Milling Machines and
`
`Components Thereof, Case No. 337-TA-1067. In this Letter, Customs stated:
`
` That the updated PM-600 and PM-800 machines “do not infringe claim 29 of [the ’309
`Patent] or claims 2, 5, 16, and 23 of [the ’530 Patent].” Id. at 8.
`
` That Wirtgen did “not focus its argument whether the Updated Machines infringe those
`claims.” Id. at 19.
`
` That Wirtgen “incorrectly characterizes Caterpillar’s” updated machines as “essentially
`hypothetical.” Id. at 20.
`
`- 13 -
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`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 16 of 26 PageID #: 38043
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` That Wirtgen and its experts inspected an updated machine “at Caterpillar’s facility in
`Maple Grove, Minnesota.”
`
`B.
`
`37.
`
`Customs Proceedings Re ’641 Redesigns
`
`Attached hereto as Exhibit 5 is a true and correct copy of a November 24, 2021
`
`letter from J. Barney to U.S. Customs and Border Protection In the Matter of Certain Road Milling
`
`Machines and Components Thereof, Case No. 337-TA-1067 instituting that a Customs proceeding
`
`pertaining to Caterpillar’s design change removing its Rotor Drum Exposure feature. Caterpillar
`
`stated, inter alia:
`
`
`
`
`
`“[T]he PM600 and PM800 machines no longer have the feature found to infringe [the ’641
`Patent]—it was removed months ago—which is why Caterpillar has submitted this ruling
`request under 19 C.F.R. § 177.1 et seq. Specifically, Caterpillar requests that Customs issue
`a ruling finding (1) that the updated PM600 and PM800 Machines do not infringe claims
`11 and 17 of the ’641 patent, and (2) that future imports of these machines would not violate
`the modified LEO that issued November 5, 2021. Id. at 2.
`
`“Caterpillar has further provided source code showing how the shutoff feature illustrated
`in Exhibits 19, 20, and 21 operates. Ex. 18 at ¶ 10; Ex. 22 (source code excerpts). Due to
`the highly confidential nature of Exhibit 22, this exhibit will be made available to Wirtgen
`only in the source code inspection room in Finnegan’s offices. Regarding providing this
`exhibit to Customs, Caterpillar will contact Customs about the best way to do so.” Id. at
`13.
`
`38.
`
`Attached hereto as Exhibit 33 is a true and correct copy an April 2, 2022 Letter
`
`from U.S. Customs and Border Protection to J. Barney re Ruling Request in ITC Investigation
`
`No. 337-TA-1067. Also available as Trial Exhibit 4435. In it, Customs stated:
`
` We find that Caterpillar Prodotti Stradali S.r.l., Caterpillar Americas CV,
`Caterpillar Paving Products Inc. and Caterpillar Inc. (collectively, “Caterpillar”)
`has met its burden to show that Caterpillar’s updated PM600 and PM800 cold
`planar machines (“Updated Machines” or “articles at issue”) do not infringe
`claims 11 and 17 of U.S. Patent No. 7,530,641 (“the ‘641 patent”).
`
` This ruling letter is the result of a request for an administrative ruling from CBP
`under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The
`process involved the two parties with a direct and demonstrable interest in the
`question presented by the ruling request: (1) your client, Caterpillar, the ruling
`requester and respondent in the 1067 investigation; and (2) Wirtgen America, Inc.
`(“Wirtgen”), complainant in the 1067 investigation.
`
`- 14 -
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`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 17 of 26 PageID #: 38044
`
`IV. WIRTGEN’S CONDUCT BEFORE CUSTOMS
`
`39.
`
`After Wirtgen filed its complaint against Caterpillar in the 1067 Investigation,
`
`Caterpillar filed an ITC complaint against Wirtgen, which resulted in Investigation No. 337-TA-
`
`1088 (the “1088 Investigation”).
`
`40.
`
`Attached hereto as Exhibit 17 is a true and correct copy of the Notice of
`
`Commission Final Determination Finding a Section 337 Violation; Issuance of a Limited
`
`Exclusion Order and a Cease and Desist Order; Termination of the Investigation In the Matter of
`
`Certain Road Milling Machines and Components Thereof, Case No. 337-TA-1088, dated June
`
`27, 2019 finding that certain Wirtgen road-milling machines infringed a Caterpillar patent and
`
`issued an exclusion order as to those machines.
`
`41.
`
`Attached hereto as Exhibit 15 is a true and correct copy of the Commission Order
`
`denying Wirtgen’s Motion to stay the remedial orders in the 1088 Investigation, dated September
`
`12, 2019.
`
`42.
`
`Attached hereto as Exhibit 16 is a true and correct copy of a Notice of Commission
`
`Decision to Deny Respondents’ Motion to Stay the Remedial Orders Pending Appeal In the Matter
`
`of Certain Road Milling Machines and Components Thereof, Case No. 337-TA-1088, dated
`
`September 12, 2019.
`
`43.
`
`Attached hereto as Exhibit 19 is a true and correct copy of the Federal Circuit’s
`
`Order in Wirtgen GMBH v. ITC, 2019-2320 [36] Order (Fed. Cir. Oct. 10, 2019) denying
`
`Wirtgen’s Motion to stay the remedial orders in the 1088 Investigation.
`
`44.
`
`Attached hereto as Exhibit 18 is a true and correct copy of a December 18, 2019
`
`letter from Customs to Wirtgen America. Customs stated the following, inter alia:
`
`
`
`“Pursuant to 19 U.S.C. § 1337(d) the following shipment is excluded from entry for
`consumption into the United States, entry for consumption from a foreign-trade zone
`
`- 15 -
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`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 18 of 26 PageID #: 38045
`
`
`
`
`
`
`
`
`
`
`
`
`
`(FTZ), and/or withdrawal from a warehouse for consumption by reason of the limited
`exclusion order issued by the [ITC] in [the 1088 Investigation].” Id. at 1.
`
`“Accordingly, as a condition of entry, the burden is on Wirtgen to show that the
`potentially infringing articles (i.e., the Wirtgen's series 1810 milling machines) do not
`infringe claim 19 of the ’693 patent. Thus far, Wirtgen has not met this burden either in
`the underlying investigation or before CBP.” Id. at 3.
`
`“On August 13, 2019, and again, on August 15, 2019, the IPR Branch offered Wirtgen
`an opportunity to submit a request for an administrative ruling under 19 C.F.R. part 177
`to obtain guidance as to whether its redesign falls within the scope of the limited
`exclusion order issued in the 1088 investigation. The IPR Branch further noted that
`there were also administrative procedures available at the Commission.” Id. at 4.
`
`“To date, Wirtgen has neither used the procedures available under Commission Rules
`210.76 and 210.79 to obtain a determination from the Commission regarding whether its
`redesign falls within the scope of the limited exclusion order issued in the 1088
`investigation. Nor has Wirtgen requested guidance from CBP under 19 C.F.R. part 177
`on that issue.” Id.
`
`“Instead, Wirtgen opted to submit a memorandum to the IPR Branch on September 5,
`2019, stating that they ‘will be importing a road milling machine that has been modified
`to be outside the scope of the limited exclusion order . . . issued by the U.S.
`International Trade Commission . . . in Investigation No. 337-TA-1088.’” Id.
`
`“Wirtgen further stated that this memorandum was not a request for an administrative
`ruling under 19 C.F.R. part 177, but rather only a ‘courtesy’ to let CBP know that an
`XFi machine ‘is already on the way.’ Wirtgen further noted that ‘([s]hould Customs
`determine to exclude that machine [described in the memorandum], Wirtgen intends to
`file an administrative protest under 19 C.F.R. [part]174.’” Id.
`
`“With respect to Wirtgen’s self-certification signed and dated September 9, 20 19; and
`to the extent Wirtgen’s memorandum dated September 5, 2019 is a form of self-
`certification, we note the following: CBP will not accept a certification that an article
`falls outside the scope of an exclusion order absent a determination by CBP or the
`Commission that the article is not subject to the exclusion order.” Id. at 5.
`
`45. Wirtgen also filed suit against Customs in United States District Court for the
`
`District of Columbia regarding Customs’ decision. See Wirtgen America, Inc., v. United States,
`
`1:20-cv- 00195-CRC (D.D.C.). Attached hereto as Exhibit 20 is a true and correct copy of a
`
`Memorandum Opinion in Wirtgen America, Inc. v. United States, No. 20-cv-195 (CRC), dated
`
`March 11, 2020. In this Exhibit, the court stated:
`
`- 16 -
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`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 19 of 26 PageID #: 38046
`
`
`
`
`
`
`
`“Last summer, the International Trade Commission (“ITC” or the “Commission”) ruled
`that a line of Wirtgen’s road-milling machines infringed a patent held by rival Caterpillar
`Inc., so it entered a limited exclusion order barring Wirtgen from importing machines “that
`infringe” the Caterpillar patent. See 19 U.S.C. § 1337(d)(1), (e)(1). Wirtgen subsequently
`attempted to import machines from the same line that it proclaimed had been modified to
`avoid infringement.” Id. at 1.
`
`“With this case, Wirtgen seeks to open yet another avenue of judicial review. Here,
`Wirtgen purports not to contest any patent infringement determinations by the ITC or the
`scope of the limited exclusion order. Wirtgen instead frames its complaint merely as a
`challenge to Customs’s application of the order to the redesigned machines, which it claims
`violates the Due Process and Appointments Clauses of the federal Constitution. On that
`basis, Wirtgen seeks a temporary restraining order and a preliminary injunction requiring
`Customs to permit entry of the machines for immediate delivery to Wirtgen’s customers.”
`Id. at 2.
`
`“The Court of International Trade recently asserted jurisdiction over Wirtgen’s challenge
`to Customs’s denial, rejecting the Government’s position that Wirtgen’s claims must go
`through the Commission and, accordingly, asserted jurisdiction over the claims. But this
`Court need not decide which of the two administrative highways—ITC to the Federal
`Circuit or Customs to the CIT—Wirtgen must travel (although it will express a view),
`because whichever route Congress meant to lay, Wirtgen may not pave a new one in federal
`district court. Concluding that Congress intended for Wirtgen’s claims to be litigated
`elsewhere, the Court will grant the Government’s motion to dismiss, deny Wirtgen’s
`motion for injunctive relief, and dismiss the case.” Id.
`
`46. Wirtgen also filed suit against Customs in the Court of International Trade on the
`
`same issue. See Wirtgen America, Inc., v. United States, 1:20-cv-00027-JCG (CIT).
`
`V.
`
`WIRTGEN’S PRICE INCREASES
`
`47.
`
`Attached hereto as Exhibit 8 is a true and correct copy of an October 7, 2019 email
`
`between J. Wiley to H. Bernd et al. re Cat quote bearing bates number WA-0145325. In this email,
`
`Mr. Wiley (Vice President of Sales) states:
`
`
`
`
`
`“Cat has reached an all time low. See attached. It is a 2017 but brand new. Not
`good timing considering we are getting another 2.2% price increase.”
`
`“I bought a pm 622 – 3 years ago for our purposes at $550,000.”
`
`- 17 -
`
`

`

`Case 1:17-cv-00770-JDW Document 409 Filed 06/11/24 Page 20 of 26 PageID #: 38047
`
`48.
`
`Attached hereto as Exhibit 9 is a true and correct copy of a November 13-17, 2017
`
`email chain between Sandy Draper and Bernd Holl bearing bates numbers WA-1135575 – WA-
`
`1135577. In this email chain at page WA-1135576, Ms. Draper states:
`
`
`
`
`
`
`
`
`
`
`
`
`
`“Jeff and I reviewed Wirtgen mill pricing today with the 2018 increases you
`provided.”
`
`“All machines listed above are price way above market and we have already
`lowered margins.”
`
`“We have to keep in mind the pricing spread between the machines.”
`
`“Our customers and dealers are tired of our annual price increases.”
`
`“This is required to keep our market share.”
`
`“If we stay with the price increases you sent on the above units we will lose share
`in 2018.”
`
`49.
`
`Attached hereto as Exhibit 10 is a true and correct copy of excerpts to the
`
`deposition transcript of Sandy Draper taken on March 22, 2023.
`
`50.
`
`Attached hereto as Exhibit 11 is a true an