Case 1:17-cv-00770-JDW Document 419 Filed 06/18/24 Page 1 of 12 PageID #: 38932
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`IN THE UNITED STATES DISTRICT COURT
`FOR 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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`WIRTGEN AMERICA, INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.,
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`Defendant/Counterclaim-Plaintiff.
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`DECLARATION OF CHARLES F. REINHOLTZ, Ph.D.
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`Case 1:17-cv-00770-JDW Document 419 Filed 06/18/24 Page 2 of 12 PageID #: 38933
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`I, Charles F. Reinholtz, declare as follows:
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`I.
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`INTRODUCTION
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`1.
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`I was retained by Defendant / Counterclaim Plaintiff Caterpillar Inc. (“Caterpillar”)
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`to conduct certain analyses in relation to Caterpillar’s U.S. Patent No. 9,975,538 (“the ’538
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`Patent”) in the above-captioned matter. I submit this Declaration in connection with Caterpillar’s
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`opposition to Wirtgen America, Inc.’s motion that Claim 13 of the ’538 Patent does not claim
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`eligible subject matter under 35 U.S.C. § 101.
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`2.
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`A true and correct copy of my Curriculum Vitae detailing my educational
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`background and experience is attached hereto as Appendix A.
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`3.
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`I was retained by Caterpillar as a technical expert in this matter. My hourly billing
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`rate is $500. My compensation is not dependent on the opinions I offer or the outcome of this
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`matter.
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`II.
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`QUALIFICATIONS AND EXPERIENCE
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`4.
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`I am currently Emeritus Professor of Mechanical Engineering at Embry-Riddle
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`Aeronautical University, Daytona Beach, Florida. In that role I continue to teach classes, serve on
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`committees and advise students in a voluntary capacity. I served as Professor and Chair of the
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`Department from 2007 until 2017. In 2017 I stepped down as Department Chair, but I continued
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`to serve as a professor until 2022.
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`5.
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`I previously held positions at Virginia Tech as an assistant professor (1983-1988),
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`associate professor (1988-1993), professor (August 1993-2007), W.S. White Chair for Innovation
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`in Engineering Education (Aug. 1996 to Aug. 1999), Assistant Department Head and ABET
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`Review Chair (1996-2002), and Alumni Distinguished Professor (2002-2007). I am a Fellow in
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`the American Society of Mechanical Engineers (ASME) and have held numerous other positions
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`Case 1:17-cv-00770-JDW Document 419 Filed 06/18/24 Page 3 of 12 PageID #: 38934
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`within that organization, including Associate Technical Editor, ASME Journal of Mechanical
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`Design, and Paper Review Chairman and Proceeding Editor for the ASME Mechanisms
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`Conference. I am also a member of the Society of Automotive Engineers (SAE), Tau Beta Pi, Pi
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`Tau Sigma, Sigma Xi, Epsilon Lambda Chi, and the Association for Unmanned Vehicle Systems
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`International (AUVSI). I have received numerous honors and awards throughout my career in
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`mechanical engineering, including receiving the Applied Mechanisms Conference Procter and
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`Gamble Best Paper Award on two separate occasions and being awarded the National Applied
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`Mechanism Conference South-Pointing Chariot Award for lifetime contributions to the
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`mechanisms community. Numerous other awards and recognitions are summarized in my CV,
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`which is attached as Appendix A. I have worked on over 65 funded research projects that have
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`received grants totaling more than $15 million.
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`6.
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`I received a Bachelor of Science degree in Mechanical Engineering from the
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`University of Florida in 1976, a Master of Engineering from the University of Florida in 1980, and
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`a Doctor of Philosophy in Mechanical Engineering from the University of Florida in 1983. In 1978,
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`I worked for Burroughs Corporation as a Design Engineer in Orlando, Florida. My job
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`responsibilities included design of products for electrophotographic printing.
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`7.
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`My teaching and research have generally been focused on the design and analysis
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`of mechanisms and mechanical systems. My teaching has included courses on mechanisms and
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`kinematics, mechanical design, controls, electro-mechanical systems, robotics, and project-based
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`capstone design. Among the topics I routinely teach are the design and analysis of linkages, gears,
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`gear trains, actuators and rotary-to-linear and linear-to-rotary motion mechanisms. I have authored
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`over 125 journal and conference papers in the areas of mechanisms, kinematics, robotics, and
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`mechanical design. I am the co-author of Mechanisms and Dynamics of Machinery, a popular
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`textbook published by John Wiley. This textbook is focused on the design and analysis of
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`mechanical devices and systems for the creation and transmission of forces and motion. Devices
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`such as cams, linkages, gears, gear trains, and intermittent-motion devices are discussed and
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`analyzed in detail in the text.
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`8.
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`I have significant experience in the design, fabrication, modification and control of
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`off road wheeled and tracked vehicles, including work on a long-wall coal mining vehicle for
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`Long-Airdox Company, development of a Remote-Control Case Excavator for the Naval Surface
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`Warfare Center, and dynamic modeling of 777-797 Haul Trucks for Caterpillar. I have also worked
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`on automated control and navigation of a hydrostatically driven zero-turn-radius Kubota Z724KH-
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`54 Lawn Mower. I have also designed or supervised the design of dozens of off-road vehicles for
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`use in student competitions and/or research and development. In addition, I have significant
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`experience in the design, fabrication and testing of vehicles that use linkages to create or
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`approximate two-wheel and four-wheel Ackermann steering. This experience is primarily through
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`my role as advisor to teams competing in the SAE (Society of Automotive Engineers) collegiate
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`design series, which includes the Formula, Formula Hybrid and Mini-Baja competitions.
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`9.
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`In parallel with my academic career, I have co-founded three engineering
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`companies: New River Kinematics, TORC Robotics and Elevated Innovations. Two of these
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`companies, New River Kinematics and TORC Robotics, continue to enjoy success in the
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`commercial market. During my time at Virginia Tech and TORC, I was involved in developing a
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`remote-controlled version of a Case CX 160 excavator for the Naval Surface Warfare Center
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`Dahlgren and a drive-by-wire version of the hybrid Ford Escape for DARPA and later for
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`commercial sale.
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`10.
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`I am a named inventor on two patents: U.S. Patent 5,699,695 entitled “Spatial,
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`Parallel-Architecture, Robotic Carpal Wrist,” which issued on December 23, 1997; and U.S. Patent
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`4,998,942, entitled “Snubber Profile,” which issued on March 12, 1991. I was also an editor of
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`four books, and I have been invited and provided presentations at numerous national meetings,
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`including “Trends and Opportunities in Mechanisms Research,” Plenary Session Speaker at the
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`4th National Applied Mechanisms and Robotics Conference, Cincinnati, Ohio, 1995; “Product
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`Safety and Product Liability,” Invited Lecture at the 2001 ASME World Congress, New York,
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`NY, 2001; “Challenges and Opportunities Offered by the DARPA Grand Challenge,” Invited
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`Presentation at the 2004 AIAA Unmanned Aerial Vehicle Conference, Chicago, IL, September,
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`2004; and “Test Drive an Autonomous Vehicle” invited presentation to the United Services
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`Automobile Association (USAA), San Antonio, TX, 2009.
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`11.
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`In addition to the experience discussed above, was qualified and testified as an
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`expert in the previous ITC litigation involving similar road construction equipment. That case
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`was captioned, “In the Matter of CERTAIN ROAD CONSTRUCTION MACHINES AND
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`COMPONENTS THEREOF, ITC Investigation No. 337-TA-1088.” As a result of that
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`investigation, the Commission issued a limited exclusion order (“LEO”) prohibiting the
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`importation by Wirtgen GmbH, Wirtgen Group Holding GmbH (“Wirtgen Group”), and Wirtgen
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`America, Inc. (“Wirtgen America”) of certain road construction machines and components thereof
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`that infringed claim 19 of U.S. Patent No. 7,140,693. The Commission also issued a cease-and-
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`desist order (“CDO”) directed to respondent Wirtgen America. That investigation is now
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`terminated.
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`12.
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`In addition to the examples and information provided above, additional relevant
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`information related to my education and professional experiences is provided in my CV and related
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`materials, attached hereto as Appendix A to my declaration. Appendix B is a listing of cases in
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`which I have provided expert testimony from 2018 to 2024.
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`III.
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`ANALYSIS
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`13.
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`For this Declaration, I have been asked to provide my opinions regarding certain
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`terms and concepts contained in the ’538 Patent when read in the context of the ’538 Patent’s
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`specification and prosecution history. My opinions are based on the understanding a person of
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`ordinary skill in the art (“POSITA”) would have as of the ’538 Patent’s priority date To that end,
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`I have been asked to assume that the ’538 Patent’s priority date is May 18, 2015 which is listed as
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`the filing date on the front page of the patent:
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`’538 Patent (D.I. 62-1), cover page.
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`A.
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`A POSITA Would Understand that Claim 13 is Directed to a Machine, Not
`an Abstract Idea.
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`14.
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`In my opinion, a POSITA would understand that the ’538 Patent’s relevant field of
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`art is milling machines. The first section of the ’538 Patent is entitled “Technical Field,” and
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`states:
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`Case 1:17-cv-00770-JDW Document 419 Filed 06/18/24 Page 7 of 12 PageID #: 38938
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`’538 Patent, 1:6-9. Two examples of a milling machine in the technical field include cold planers
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`and rotary mixers. However, the ’538 Patent’s specification later provides other examples milling
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`machines including “pavement profilers,” “road milling machines,” “roadway planers,” “rotary
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`mixers,” and/or “any other suitable machine having a cutter or planning rotor and adapted to
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`scarify, remove, mix or reclaim material from the surface of bituminous or concrete roadways and
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`similar surfaces.” ’538 Patent, 2:38-46. In my opinion, a POSITA would understand these
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`passages to describe the relevant field of art and would interpret the plain and ordinary meaning
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`of the terms in the claims and specification in the context of the relevant field of art.
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`15.
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`I also understand that in its motion, Wirtgen America stated that the rotor of Claim
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`13 “could be any rotatable component (for example, a shaft) driven by an engine, including a
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`vehicle drive axle.” Motion at 3. I do not agree with this statement. In my view, a POSITA would
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`understand that in milling machines the rotor is the rotatable cylindrical part of the machine with
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`teeth (or bits) that cut into the surface. This is indicated in the ’538 Patent’s specification when it
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`states that milling machines have “a cutter or planning rotor and [are] adapted to scarify, remove,
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`mix or reclaim material from the surface of bituminous or concrete roadways and similar surfaces.”
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`’538 Patent at 2:38-46. The specification also specifically refers to the rotor as the rotatable
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`cylindrical component of the machine that cuts the surface:
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`’538 Patent at 2:60-63. In contrast, a driveshaft is used to transmit mechanical power from one
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`portion of a machine to another portion. For example, transferring mechanical power generated
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`by an automotive engine to drive the wheels. This is fundamentally different than the claimed
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`rotor.
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`16. My opinion that a POSITA would understand that a rotor is a specific component
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`in milling machines (and not simply any rotatable component) is also consistent with certain
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`extrinsic evidence from Wirtgen. For example, Wirtgen America’s U.S. Patent No. 7,828,309
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`(earliest filing date March 10, 2005) explains that milling/mixing rotors are known to a POSITA:
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`’309 Patent (D.I. 369-38), 5:31-34. The ’309 Patent elsewhere describes a milling machine’s rotor
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`as a “milling/mixing rotor” (1:19-23), which is consistent with the ’538 Patent’s use of the term as
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`the component that cuts the surface and thereby scarifies, removes, mixes, or reclaims material.
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`’538 Patent 2:38-46.
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`17.
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`In my view, a POSITA would understand that the rotor of the ’538 Patent is not an
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`abstract concept but a specific mechanical component with a known operation within the field of
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`road milling, as described in the ’538 Patent.
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`18.
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`In my opinion Claim 13 identifies other structures that a POSITA would understand
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`are not abstract but are concrete, physical (and mechanical) structures with operations known to a
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`POSITA. For example, a POSITA would understand that a milling machine’s “engine” is a “a
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`power source” that drives the other mechanical components of the machine, including the claimed
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`rotor. See ’538 Patent at 2:63-67. A POSITA would also understand that a variable transmission
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`is a component that allows at least two different speed ratios between the input and the output of
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`the transmission. This is in contrast to a fixed-ratio transmission that would provide a fixed
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`increase or decrease in speed. Some variable transmissions can provide many discrete speed ratios
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`(e.g., a 4-speed or a 7-speed transmission) while others may provide an infinite range of speed
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`ratios. The clutch is another mechanical component that is used to selectively engage and
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`disengage the engine from other driven mechanical components, including the rotor. See ’538
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`Patent Claim 13, 3:30-37.
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`19.
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`A POSITA would also recognize that Claim 13’s machine requires these
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`components to be connected in a specific way. For example, the claim requires the variable
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`transmission to be coupled to the engine’s output. The rotor must be coupled to the transmission’s
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`output. And the clutch must be located between the engine and the rotor so that it can disengage
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`the rotor from the engine.
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`20.
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`Because of these specific structures, in my opinion a POSITA would understand
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`Claim 13 to recite a physical machine and not an abstract idea. This is because the claimed
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`machine has specific required physical components with a specific arrangement and operation.
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`B.
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`21.
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`Claim 13 Has An Inventive Concept
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`I disagree that claim 13 recites an abstract idea. I have, however, been asked to
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`consider whether a POSITA would understand Claim 13 to recite an “inventive concept.” I have
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`been informed that an “inventive concept” means that claim recites additional features to ensure
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`that the claim is more than a drafting effort designed to monopolize the abstract idea. I have been
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`further informed that one way to demonstrate that a patent claim has an inventive concept is by
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`applying the “machine-or-transformation” test. Under this test, I understand that a claim can be
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`patent-eligible either if (1) it is tied to a particular machine or apparatus or (2) if the claim
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`transforms a particular article into a different state or thing. In my opinion, a POSITA reading
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`Claim 13 in light of the specification would understand that both alternatives are present in Claim
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`13.
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`22.
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`First, in my opinion, a POSITA would recognize that Claim 13 is tied to a particular
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`machine or apparatus. As I describe above in Paragraphs 17-20, Claim 13 recites four mechanical
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`components (engine, variable transmission, rotor, and clutch) that have a specific arrangement.
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`The claimed components and arrangement are not trivial. In reviewing the ’538 Patent’s file
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`history, I understand that the Patent Office found Claim 13 patentable because certain prior art
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`identified by Wirtgen lacked a clutch as required by Claim 13. See Exhibit 2 at 50-57 (repeatedly
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`stating that the prior art fails to teach or suggest “the subject matter of claim 13”).1 Put another
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`way, a POSITA would recognize that it is possible to avoid Claim 13 by not practicing the specific
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`limitations of the mechanical components, such as (for example) by removing the clutch from the
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`1 “Exhibit 2” means Exhibit 2 to “Caterpillar Inc.’s Opposition to Plaintiff’s Motion For
`Judgment on the Pleadings that the ’538 Patent Is Invalid,” filed concurrently herewith. I
`understand that Exhibit 2 is the March 12, 2024 Final Written Decision in Wirtgen America, Inc.
`v. Caterpillar Inc., Case No. IPR2022-01397 for U.S. Patent No. 9,975,538.
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`machine or adjusting its operation so that it does not selectively disengage the rotor from the
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`engine.
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`23.
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`Second, a POSITA would also recognize that Claim 13 transforms particular
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`articles into a different state. Specifically, Claim 13 recites that (1) the engine’s speed can be
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`adjusted; (2) the variable transmission’s gear ratio can be adjusted; and (3) that the clutch may
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`selectively disengage the rotor from the engine. A POSITA would understand that each of these
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`constitute a state change in their respective mechanical components because the components’
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`operating characteristics are altered.
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`C.
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`24.
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`Conventionality
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`Claim 13 also recites a controller that is used to facilitate physical changes to the
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`machine components by adjusting engine speed, changing transmission gear ratios, and
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`disengaging the clutch from the rotor. In my opinion, a POSITA would also understand that Claim
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`13 recites an unconventional use of a controller. Such a POSITA would recognize that Claim 13
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`provides a technological solution to the problem of maintaining a desired rotor speed. That
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`technological solution involves monitoring engine load, determining an optimum engine speed,
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`and then adjusting both the engine speed and the gear ratio of the variable transmission. Such
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`functionality is not a conventional use of a controller. Rather, it is a specific application of a
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`controller to solve a specific problem known in the milling machine industry regarding efficiently
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`maintaining engine speeds. See ’538 Patent at 1:13-48.
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`25.
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`As another example of non-conventionality, I understand that during the inter
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`partes review of the ’538 Patent, the Patent Office determined that Claim 13 involves the rotor
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`being disengaged from engine. The prior art, however, disclosed a solution where a component
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`disengaged power between the engine and rotor. See Exhibit 2 at 50-51. However, the Patent
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`Office confirmed that Claim 13 “does not simply require disengagement of the power flowing
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`through the clutch as Petitioner contends.” Id. at 53. Since the prior art’s rotor “would remain
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`engaged to the engine via the hydrostatic branch,” it did not teach or suggest the requirement of
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`Claim 13. Id. at 53-54. Since the subject matter of Claim 13 is not taught or suggested by the
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`prior art, in my opinion a POSITA would not consider Claim 13 to recite conventional operation
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`of a milling machine.
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`I declare under penalty of perjury under the laws of the United States that the foregoing is
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`true and correct to the best of my knowledge and belief after reasonable investigation. Executed
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`this 18 day of June 2024 in New Smyrna Beach, Florida.
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`Charles F. Reinholtz
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