Case 1:17-cv-00770-JDW Document 428 Filed 06/28/24 Page 1 of 5 PageID #: 39031
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`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
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`))))))))))
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`WIRTGEN AMERICA, INC.,
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`Plaintiff
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`v.
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`CATERPILLAR INC.,
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`Defendant
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`DECLARATION OF RYAN R. SMITH IN SUPPORT OF CATERPILLAR INC.’S
`MOTION TO AMEND THE SCHEDULING ORDER
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`I, Ryan R. Smith, declare as follows:
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`1.
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`I am an attorney at Wilson Sonsini Goodrich & Rosati, P.C., counsel of record for
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`Defendant Caterpillar Inc. (“Caterpillar”) in the above-referenced matter. I have personal
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`knowledge as to the facts contained herein and could and would completely testify thereto.
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`2.
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`After the Court lifted the stay on April 1, 2024, I was personally involved in
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`negotiations with Wirtgen regarding how to complete fact and expert discovery. I was also
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`involved in amending Caterpillar’s infringement contentions.
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`3.
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`On March 10, 2023, the Court issued its claim construction order, which construed
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`the phrase “between projecting and retracted positions relative to said machine frame” of the ’995
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`patent in a way that neither party had proposed. Caterpillar’s Infringement Contentions were due
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`the same day. Caterpillar did not have sufficient time to evaluate the impact of the Court’s claim
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`construction before serving its 3/2024 Infringement Contentions.1 Indeed, Wirtgen sells a variety
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`of cold planners and paving machines such that reevaluating the potential infringement of each
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`1 I am using the same abbreviations as those used by Caterpillar in its Table of Abbreviations
`associated with its Brief in Support of its Motion for Leave to Amend the Scheduling Order, filed
`concurrently.
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`-1-
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`Case 1:17-cv-00770-JDW Document 428 Filed 06/28/24 Page 2 of 5 PageID #: 39032
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`machine was a substantial undertaking. Accordingly, Caterpillar reserved the right to amend its
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`3/2024 Infringement Contentions. Wirtgen did not object to this reservation at the time.
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`4.
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`That same day, March 10, 2023, the Patent Office instituted one of Wirtgen’s IPR
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`petitions against the ’995 patent. The parties then began discussing the parameters of a stay of the
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`’995 patent pending a Final Written Decision from the Patent Office. The Patent Office also
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`initiated Wirtgen’s IPR petition against the ’538 patent on March 14, 2024.
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`5.
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`By April 7, 2023, the parties had agreed to stay the ’995 and ’538 patents.
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`Consequently, when Caterpillar served its 4/2023 Infringement Contentions (Ex. 3)2 Caterpillar’s
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`only amendment was to add the inadvertently omitted W 207 Fi with respect to the ’618 patent.
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`Id. at n.1. Caterpillar sought Wirtgen’s consent for this amendment. Wirtgen consented to the
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`amendment and agreed that the already-accused W 210 Fi is representative of the W 207 Fi as to
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`the ’618 patent. Id. On Monday, April 10, 2023, the next business day, the parties filed their
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`stipulated stay of the ’995 and ’538 patents. D.I. 185. At that time, Caterpillar understood that
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`additional discovery would be needed after the stay lifted.
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`6.
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`On April 1, 2024, the Court lifted the stay. The parties then began negotiating how
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`to proceed with the case as to the ’995 and ’538 patents. See Ex. 4. Both parties recognized that
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`they would need supplemental discovery, including updated contentions, interrogatory responses,
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`and supplemental document productions. At this time, neither party agreed to any limitations as
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`to products, claims, or prior art that could be added to their contentions. Indeed, Wirtgen requested
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`that Caterpillar provide a list of newly asserted claims in light of the IPR decisions. Id. at 8.
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`Caterpillar confirmed that it would update its asserted claims. Id. at 4-5. On April 22, 2024,
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`2 “Ex.” cites are to the exhibits attached to Caterpillar’s Brief in Support of its Motion for Leave
`to Amend the Scheduling Order, filed concurrently.
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`-2-
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`Case 1:17-cv-00770-JDW Document 428 Filed 06/28/24 Page 3 of 5 PageID #: 39033
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`Caterpillar also identified the model numbers of the additional accused products it wished to
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`inspect. Id. at 4-6. Since then, Caterpillar has been diligently trying to set up inspections of the
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`accused products. However, Wirtgen has refused any inspection (except for the W 220 XFi) and
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`disputes whether the newly accused products are properly part of this case.
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`7.
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`Importantly, the parties agreed to exchange supplemental interrogatory responses,
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`infringement contentions, and invalidity contentions on May 24, 2024. To prepare its 5/2024
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`Infringement Contentions, Caterpillar analyzed the Court’s claim construction, the recently issued
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`IPR decisions and Wirtgen’s request for ex-parte reexamination (Ex. 8). Based on this analysis,
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`Caterpillar concluded that several previously unidentified Wirtgen machines infringed the ’995
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`patent.
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`8.
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`Ultimately, Caterpillar’s 5/2024 Infringement Contentions3 dropped asserted
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`claims that had been found invalid; added claims 49, 54, and 57 of the ’995 patent; and added
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`accused products, including the W 207 Fi and W 220 XFi for the ’538 patent, and several cold
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`planers and pavers for the ’995 patent. Ex. 5 at 2, Exhibit A, pg. 1, Exhibit B, pg. 1, and Exhibit
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`C, pg.1.
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`9.
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`Caterpillar added the W 207 Fi to the 5/2024 Infringement Contentions because it
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`had been inadvertently omitted from the 3/2023 Infringement Contentions. Caterpillar included
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`additional accused products for the ’995 patent because the Court’s claim construction altered
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`Caterpillar’s infringement analysis.
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`10.
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`Caterpillar asserted additional dependent claims of the ’995 patent for two reasons:
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`First, Caterpillar had originally asserted only a subset of the ’995 patent claims due to the
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`3 Caterpillar served a corrected version of its 5/2024 Infringement Contentions on May 28, 2024
`that replaces the one served on May 24, 2024. The May 28, 2024 corrects certain clerical errors.
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`-3-
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`Case 1:17-cv-00770-JDW Document 428 Filed 06/28/24 Page 4 of 5 PageID #: 39034
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`limitations of what it could present at trial. However, when the Patent Office invalidated several
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`of the originally asserted claims in March 2024, Caterpillar was able to include these additional
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`claims while still reducing the overall number of claims significantly. Second, Wirtgen’s
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`challenge of claims 49, 54, and 57 before the Patent Office was predicated on Wirtgen’s broad
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`claim interpretations which swept in additional infringing products.
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`11. Wirtgen also served Amended Invalidity Contentions on May 24, 2024, which
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`added previously undisclosed invalidity theories. Ex. 7.
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`12.
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`Despite previously agreeing that the parties could each supplement their
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`contentions on May 24, 2024, Wirtgen now objects to the additional asserted claims and accused
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`products that Caterpillar added to its infringement contentions. The parties met and conferred on
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`June 12, 2024, to discuss Wirtgen’s objections. During this teleconference, Wirtgen admitted that
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`the parties had previously agreed that both parties would supplement their respective contentions.
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`However, Wirtgen now argued that there should be limitations on what could be added.
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`Specifically, Wirtgen claimed for the first time that it had only agreed that the parties may
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`supplement their contentions, and it had not agreed that the parties may amend their contentions.
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`Wirtgen argued that adding asserted claims and accused products is an impermissible amendment
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`to the contentions, rather than a permissible supplement. However, the parties never even
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`previously discussed, and Wirtgen never previously provided, its views on the differences between
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`an amendment versus a supplement. Wirtgen also could not adequately explain why it believed it
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`could amend its invalidity contentions, while Caterpillar could not amend its infringement
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`contentions. Caterpillar then asked Wirtgen to identify any prejudice its amended infringement
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`contentions would cause and how any such prejudice could be cured. Wirtgen responded that there
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`may need to be additional discovery and construction of means-plus-function elements in claims
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`-4-
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`Case 1:17-cv-00770-JDW Document 428 Filed 06/28/24 Page 5 of 5 PageID #: 39035
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`49 and 51 of the ’995 patent. However, Caterpillar agreed to Wirtgen’s proposed construction
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`from its ex parte reexamination request, thereby curing any potential prejudice.
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`13.
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`On June 13, 2024, after additional analysis of Wirtgen’s product lineup, Caterpillar
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`served its Fourth Amended Infringement Contention, which added six more accused products for
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`the ’995 patent. Ex. 6 (“6/2024 Infringement Contentions”). Wirtgen has been unwilling to update
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`the parties’ stipulation on representative products. But to the extent these six additional products
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`are similar to those previously identified in the 5/2024 Infringement Contentions, Caterpillar may
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`be able to limit the discovery needed on these six products and the others identified in the 5/2024
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`Infringement Contentions.
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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 June 28, 2024 in Palo Alto, California.
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`/s/ Ryan R. Smith
` Ryan R. Smith
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`-5-
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