Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 1 of 16 PageID #: 39141
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.
`
`Plaintiff/Counterclaim Defendant,
`
`
`
`
`
`
`Case No. 17-770-JDW
`
`
`
`v.
`CATERPILLAR INC.
`Defendant/Counterclaim Plaintiff.
`
`
`PLAINTIFF’S COMBINED REPLY IN SUPPORT OF MOTION FOR JUDGMENT ON
`THE PLEADINGS THAT THE ’538 PATENT IS INVALID AND OPPOSITION TO
`CATERPILLAR’S CROSS MOTION UNDER FED. R. CIV. P. 12(c)
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Plaintiff Wirtgen America, Inc.
`
`
`Dated: July 2, 2024
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
`
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`William H. Milliken
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`wmilliken@sternekessler.com
`
`i
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 2 of 16 PageID #: 39142
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ......................................................................................................................... 1
`
`Implementing an abstract idea into a generically claimed, conventional machine does not
`automatically render the patent eligible at step one. ........................................................... 2
`
`A.
`
`The recitation of conventional physical structures does not alter the focus of a
`claim directed to an abstract idea. ........................................................................... 2
`
`B. Wirtgen’s identified abstract idea is specifically tied to the claim language. ......... 4
`
`III.
`
`Caterpillar does not identify any inventive concept at step two. ........................................ 5
`
`A.
`
`B.
`
`C.
`
`The clutch is conventional. ..................................................................................... 6
`
`The remaining components are conventional. ........................................................ 8
`
`The arrangement of the components is conventional and the components operate
`according to the components’ conventional functions. ........................................... 8
`
`There are no claim construction issues that bear on eligibility. .......................................... 9
`
`The Court should dismiss this case with prejudice. ............................................................ 9
`
`IV.
`
`V.
`
`
`
`
`
`ii
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`

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`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 3 of 16 PageID #: 39143
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................................... 2, 4
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`966 F. 3d 1347 (Fed. Cir. 2020)...................................................................................................... 1
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`967 F. 3d 1285 (Fed. Cir. 2020)...................................................................................................... 3
`
`Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
`788 F.3d 1371 (Fed. Cir. 2015)....................................................................................................... 9
`
`Beteiro, LLC v. DraftKings Inc.,
`No. 2022-2275, --- F. 4th ---, 2024 WL 3077636 (Fed. Cir. June 21, 2024) ......................... passim
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) ........................................................................................................................ 9
`
`Chamberlain Grp. v. Techtronic Indus. Co.,
`935 F.3d 1341 (Fed. Cir. 2019)............................................................................................... 2, 5, 6
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)..................................................................................................... 2, 6
`
`Diamond. v. Diehr,
`450 U.S. 175 (1981) ........................................................................................................................ 3
`
`Immersion Corp. v. Fitbit, Inc.,
`313 F. Supp. 3d 1005 (N.D. Cal. 2018) ...................................................................................... 3, 4
`
`In re TLI Commc’ns Patent Litig.,
`823 F.3d 607 (Fed. Cir. 2016)......................................................................................................... 1
`
`Lumitech Intellectual Property LLC v. Ikea Supply AG,
`No. 2:20-cv-04399-JDW, 2021 WL 4499407 (E.D. Pa. April 22, 2021) ................................... 3, 4
`
`Parker v. Flook,
`437 U.S. 584 (1978) ........................................................................................................................ 4
`
`Recentive Analysis, Inc. v. Fox Corp.,
`692 F. Supp. 3d 438 (D. Del. 2023) .............................................................................................. 10
`
`
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 4 of 16 PageID #: 39144
`
`RICPI Communications LLC v. JPS Interoperability Solutions, Inc.,
`No. 18-1507-RGA, 2019 WL 1244077 (D. Del. March 18, 2019)............................................. 3, 4
`
`Sanderling Management Ltd. v. Snap Inc.,
`65 F.4th 698 (Fed. Cir. 2023) ....................................................................................................... 10
`
`SAP Am. Inc. v. InvestPic,
`898 F.3d 1161 (Fed. Cir. 2018)................................................................................................... 5, 6
`
`Solutran, Inc. v. Elavon, Inc.,
`931 F.3d 1161 (Fed. Cir. 2019)................................................................................................... 1, 6
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017)....................................................................................................... 1
`
`Universal Secure Registry LLC v. Apple Inc.,
`10 F.4th 1342 (Fed. Cir. 2021) ................................................................................................... 1, 8
`
`Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC,
`635 F. App’x 914 (Fed. Cir. 2015) ................................................................................................. 6
`
`Weisner v. Google LLC,
`51 F.4th 1073 (Fed. Cir. 2022) ....................................................................................................... 8
`
`Yu v. Apple Inc.,
`1 F.4th 1040 (Fed. Cir. 2021) ..................................................................................................... 1, 2
`
`
`
`
`iv
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 5 of 16 PageID #: 39145
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`I.
`
`Introduction
`
`Caterpillar asks the Court to hold that a clutch, an engine, a variable transmission, and a
`
`rotor are unconventional features in a milling machine and thereby supply an inventive concept.
`
`But even Caterpillar cannot bring itself to affirmatively state that any particular component is more
`
`than conventional. Nor can Caterpillar identify a non-conventional aspect of any mechanical
`
`component or even a non-conventional use of any mechanical component. Rather, the mechanical
`
`components in the ’538 patent perform their conventional functions. For example, the clutch
`
`disconnects a power source from a driven element. D.I. 62, Ex. 3 (’538 patent) 3:30-37. That is
`
`what clutches do and is the epitome of conventional. And the PTAB’s decision on non-obviousness
`
`is beside the point because the statutory requirements under § 101 are distinct and independent
`
`from the requirements under § 103. Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874
`
`F.3d 1329, 1339-40 (Fed. Cir. 2017).
`
`Caterpillar’s eligibility arguments largely depend on the contention that being a physical
`
`device alone saves a patent from § 101. That is legally wrong. See Yu v. Apple Inc., 1 F.4th 1040,
`
`1043–44 & n.2 (Fed. Cir. 2021); Universal Secure Registry LLC v. Apple Inc., 10 F.4th 1342, 1352
`
`(Fed. Cir. 2021); In re TLI Commc’ns Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). Caterpillar
`
`also relies heavily on the machine-or-transformation test. After Alice, however, “passing th[at] test
`
`alone is insufficient” to satisfy step two. Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed.
`
`Cir. 2019). Indeed, the Federal Circuit has essentially abandoned it.
`
`“The lesson to patent drafters should now be clear … simply reciting a functional result at
`
`the point of novelty poses serious risks under section 101.” Am. Axle & Mfg., Inc. v. Neapco
`
`Holdings LLC, 966 F. 3d 1347, 1356 (Fed. Cir. 2020) (Chen., J. concurring in the denial of
`
`rehearing en banc). Like in American Axle, the tangible elements of claim 13 of the ’538 patent do
`
`not eclipse the functional, result-oriented nature of the claims. Indeed, throughout 20 pages of
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 6 of 16 PageID #: 39146
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`argument, Caterpillar never once grapples with the point that the patent merely claims a result, not
`
`a concrete mechanism of achieving that result. That is fatal: “Claims of this nature are almost
`
`always found to be ineligible.” Beteiro, LLC v. DraftKings Inc., No. 2022-2275, --- F. 4th ---, 2024
`
`WL 3077636, at *4 (Fed. Cir. June 21, 2024).
`
`II.
`
`Implementing an abstract idea into a generically claimed, conventional machine does
`not automatically render the patent eligible at step one.
`
`A.
`
`The recitation of conventional physical structures does not alter the focus of a
`claim directed to an abstract idea.
`
`Determining the focus of the claim involves more than asking if it recites a tangible
`
`product. Instead, the Court must ascertain the focus of the claim as a whole. Caterpillar’s step one
`
`analysis repeatedly attempts to brush away the role an algorithm might play within a tangible
`
`system, arguing that “[i]t is not sufficient to prove ineligibility of a machine claim to point to an
`
`algorithm or equation that is merely one part of a claim ‘otherwise directed to patentable subject
`
`matter.’” D.I. 418 (“Opp.”) at 9. But Caterpillar’s analysis glosses over the required showing that
`
`the claims are “otherwise directed to patentable subject matter,” presuming the tangible nature of
`
`the claims to be sufficient alone. The Federal Circuit has repeatedly rejected this line of argument.
`
`As “the Supreme Court indicated in Alice, whether a device is ‘a tangible system (in § 101
`
`terms, a “machine”)’ is not dispositive.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
`
`770 (Fed. Cir. 2019) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014))
`
`(claims to an electric vehicle charging station were directed to an abstract idea and ineligible).
`
`Indeed, “[w]ithout more, the mere physical nature” of a claim’s elements “is not enough to save
`
`the claims from abstractness.” Chamberlain Grp. v. Techtronic Indus. Co., 935 F.3d 1341, 1348
`
`(Fed. Cir. 2019) (claims to garage door openers were directed to an abstract idea and ineligible).
`
`The Federal Circuit has consistently reaffirmed that a claim reciting tangible elements does not
`
`save a claim from being directed to an abstract idea. See, e.g., Yu, 1 F.4th at 1043–44 & n.2. This
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 7 of 16 PageID #: 39147
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`principle is not limited to computer components but also applies to other devices like automobiles.
`
`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F. 3d 1285, 1292 n.3 (Fed. Cir. 2020).
`
`Caterpillar’s cited case law does not counsel otherwise. In Lumitech Intellectual Property
`
`LLC v. Ikea Supply AG, the claimed structures were unconventional: the patent “describe[d] a
`
`structure for an LED light that can produce different types of white light with a high level of
`
`efficiency and that can be adjusted in a way LED lights previously could not.” 2021 WL 4499407,
`
`at *2 (E.D. Pa. April 22, 2021). While the physical structure was described generically as a
`
`“module,” the new functionality evinced that the structure was non-conventional. Id.
`
`Caterpillar’s other cited cases are inapposite for similar reasons. Immersion Corp. v. Fitbit,
`
`Inc. found that the hardware components were not conventional because the patent “state[d] that
`
`no previous touchpad incorporated haptic feedback and describe[d] the problem as how to notify
`
`a user that a task has completed or another event has occurred when the user is not looking at the
`
`screen.” 313 F. Supp. 3d 1005, 1024 (N.D. Cal. 2018). The patent disclosed a “new arrangement
`
`of known components that solve[d] the problem of how to provide non-audio, non-visual
`
`notification to a user.” And, in RICPI Communications LLC v. JPS Interoperability Solutions, Inc.,
`
`the Court did not find the claims non-abstract simply because they recited a two-way radio. 2019
`
`WL 1244077, at *4 (D. Del. March 18, 2019). Instead, the claims described a detailed hardware
`
`arrangement that provided functionality that two-way radios did not previously have. Id. at *4-5.
`
`Diamond. v. Diehr, 450 U.S. 175 (1981), is of no help to Caterpillar either. The claimed
`
`invention was a process for curing rubber that involved a specific series of steps, including
`
`continuously measuring the temperature inside the mold and then using that measurement to
`
`“repeatedly recalculate[] the cure time” through a known equation. Id. at 178 & n.3, 187. “The
`
`invention in Diehr used a ‘thermocouple’ to record constant temperature measurements inside the
`
`3
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`

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`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 8 of 16 PageID #: 39148
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`rubber mold—something ‘the industry ha[d] not been able to obtain.’” Alice, 573 U.S. at 223
`
`(quoting Diehr, 450 U.S. at 178 & n.3). These claims were thus “patent eligible because they
`
`improved an existing technological process.” Id.1
`
`Caterpillar does not identify any analogous aspect of claim 13. Caterpillar does not argue
`
`that the claimed machine (or any of its components) operates in a way milling machines previously
`
`could not (Lumitech, RICPI, and Diehr) or had new features (Immersion and Diehr). The physical
`
`components in the claim “are indisputably generic and conventional.” Mot. 7. The purported
`
`innovation here is the result that rotor speed is maintained and fuel efficiency is maximized. Id. at
`
`9-10. But claims drafted with “result-oriented functional language, containing no specificity about
`
`how the purported invention achieves those results …. are almost always found to be ineligible.”
`
`Beteiro, 2024 WL 3077636 at *4. To this key point, Caterpillar has no answer.
`
`B. Wirtgen’s identified abstract idea is specifically tied to the claim language.
`
`Caterpillar’s contention (at 15) that Wirtgen overgeneralized the claims is incorrect.
`
`Caterpillar appears to believe that the proper recitation of the abstract idea must specifically
`
`account for every element of the claim, asserting that Wirtgen should have included the recitation
`
`of the clutch. See Opp. 15. But step one is not an exercise in regurgitating the claim language. The
`
`Federal Circuit has repeatedly explained that the analysis should look at “the claimed advance over
`
`the prior art to determine if the claim’s character as a whole is directed to excluded subject matter.”
`
`
`1 Notably, Diehr distinguished the claims in in that case from those in Parker v. Flook, 437
`U.S. 584 (1978), which involved claims to a method for computing an “alarm limit” by plugging
`various variables into an equation. See Diehr, 450 U.S. at 186-87. The Flook claims were ineligible
`because, among other things, the patent did not explain how to determine any of those underlying
`variables or describe any technical details underlying the variables’ relationship with the alarm
`limit. See id. at 186-87 & n.10, 192 n.14. Similar reasoning holds for the ’538 patent: claim 13
`“does not specify how to identify any ‘predefined efficiency points’ or how to use that information
`along with the machine’s operating parameters to adjust engine speed and gear ratio to optimize
`fuel efficiency while maintaining rotor speed.” D.I. 386 (“Mot.”) 10-11.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 9 of 16 PageID #: 39149
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`Chamberlain, 935 F.3d at 1346. And, here, the purported advance is “the abstract idea of selecting
`
`operating conditions of a machine—namely, engine speed and gear ratio—to optimize fuel
`
`efficiency while maintaining a constant rotor speed.” Mot. 6-7. This result is accomplished via
`
`“generic computer functions [that] do nothing to improve the underlying technology, placing the
`
`claims in ‘the familiar class of claims that do not “focus …on [] an improvement in computers as
`
`tools, but on certain independently abstract ideas that use computers as tools.”’” Mot. 8-9 (quoting
`
`SAP Am. Inc. v. InvestPic, 898 F.3d 1161, 1168 (Fed. Cir. 2018)).
`
`Further, Wirtgen demonstrated that the physical components are not part of the focus of
`
`the claims because “an engine, a variable transmission, a rotor, a controller, and a clutch” “are
`
`indisputably generic and conventional.” Id. at 7. This approach is consistent with Chamberlain.
`
`That case held that claims on a garage door opener were directed to wireless communications—
`
`even though they also recited hardware—because the wireless elements were the “described
`
`difference between the prior art movable barrier operator systems and the claimed movable barrier
`
`operator system.” 935 F.3d at 1346. Wirtgen’s focus on the claimed result, rather than the physical
`
`components, is further consistent with Caterpillar’s arguments in prosecution, where Caterpillar
`
`contended the claims were patentable because the prior art “is silent as to adjusting the engine
`
`speed based on engine load and one or more predefined efficiency points that may be at least
`
`partially based on predetermined fuel consumption rates.” D.I. 418-1, PageID 38768. The
`
`Examiner identified this same argument for allowing the claims. D.I. 418-1, PageID 38743.
`
`Wirtgen does not contend that the controller alone renders the claims abstract. Contra Opp.
`
`13–15. The point is that the algorithm—i.e., describing only the results that the controller
`
`achieves—is the claims’ focus and is abstract. Mot. 6-11.
`
`III. Caterpillar does not identify any inventive concept at step two.
`
`Caterpillar fails to explain what component or arrangement of components is not
`
`5
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`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 10 of 16 PageID #: 39150
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`conventional. Caterpillar relies instead on implications from the IPR, vague allusions to “state
`
`changes,” and the essentially abandoned machine-or-transformation test. Contra Solutran, 931
`
`F.3d at 1169 (claim that passes the machine-or-transformation test does not necessarily contain an
`
`inventive concept at Alice step two); Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA,
`
`LLC, 635 F. App’x 914, 919 (Fed. Cir. 2015) (same). This should not be surprising—Caterpillar
`
`cannot in good faith assert that there is an inventive concept lurking in its generically claimed
`
`clutch, engine, variable transmission, or rotor. “These conventional components, all recited in a
`
`generic way, are no better equipped to save the claim from abstractness than were, for example,
`
`the conventional computer used in Alice.” Chamberlain, 935 F.3d at 1348.
`
`A.
`
`The clutch is conventional.
`
`Caterpillar never affirmatively states that the clutch is not conventional. Caterpillar instead
`
`discusses the inter partes review (IPR) and the Board’s holding that Wirtgen failed to show claim
`
`13 was unpatentable. These arguments fail.
`
`As an initial matter, it is important to be clear what the PTAB actually found to be missing
`
`from the prior art. The references Wirtgen asserted in that proceeding undisputedly included clutch
`
`arrangements, see, e.g., Opp. 5-6, each more complex than the arrangement in the claims. The
`
`PTAB found claim 13 not unpatentable because, in its view, those references did not disclose a
`
`clutch configured to disengage the rotor from the engine. See D.I. 418-2 at 54, 63-64. That finding,
`
`even if assumed correct, does not help Caterpillar at step two for several related reasons.
`
`First, the limitation of claim 13 reciting that the controller is “configured to selectively
`
`disengage the rotor from the engine through control of the clutch” is just another functionally
`
`claimed result. Results, in themselves, are abstract, see Beteiro, 2024 WL 3077636 at *4, and an
`
`abstract idea cannot as a matter of law impart an inventive concept, see ChargePoint, 920 F.3d at
`
`774. That is so even if the abstract idea is new or non-obvious. See SAP, 898 F.3d at 1170; contra
`
`6
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`

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`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 11 of 16 PageID #: 39151
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`Opp. 2 (incorrectly suggesting that claim 13 imparts an inventive concept because it was found
`
`non-obvious). Eligibility and novelty are separate inquiries. See Diehr, 450 U.S. at 188-90.
`
`Second, the patent itself conclusively refutes any contention that Caterpillar discovered
`
`some inventive type of clutch or some inventive arrangement for a clutch. The specification
`
`mentions a clutch exactly once, in the following two-sentence passage:
`
`As also shown in Fig. 2, the CVT 124 may further include a clutch
`140, a mechanical arrangement 142, a hydrostatic arrangement 144,
`as well as a planetary gear set 146 having a sun gear 148, planetary
`gears 150, a carrier 152 and a ring gear 154. In the embodiment
`shown, the clutch 140 may selectively couple the engine output 136
`to one or more of the mechanical arrangement 142 and the
`hydrostatic arrangement 144.
`
`’538 patent, 3:30-37. This limited discussion “can only plausibly mean that the patent applicant
`
`drafted the specification understanding that a person of ordinary skill in the art knew what a
`
`[clutch] was, how to include it on a [milling machine], and that using it for the purposes disclosed
`
`in the patent was routine, conventional, and well-understood.” Beteiro, 2024 WL 3077636, at *5
`
`(rejecting patentee’s allegation that the claimed use of GPS in a mobile phone was an inventive
`
`concept because the specification only briefly addressed that concept).
`
`Third, to the extent Caterpillar is trying to imply that claim 13’s clutch enables the claimed
`
`machine to solve the purported problem of “maintaining stable rotor speeds and improving fuel
`
`efficiency,” Opp. 2, Caterpillar is wrong. That result is recited in claim 6, which does not require
`
`a clutch at all. So the suggestion that the additional limitation added by claim 13 has anything to
`
`do with the feature that Caterpillar relied on to gain allowance is plainly incorrect.2
`
`The ’538 patent recites a conventional clutch, and Caterpillar cannot argue otherwise. The
`
`clutch therefore cannot impart an inventive concept at step two.
`
`
`2 Caterpillar also ignores that, during prosecution, the examiner found claim 13’s clutch
`limitation met by Parker—a finding Caterpillar did not challenge. D.I. 418-1, PageID 38778.
`
`7
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`

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`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 12 of 16 PageID #: 39152
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`B.
`
`The remaining components are conventional.
`
`Caterpillar does not identify a non-conventional aspect of the engine, variable transmission,
`
`or the rotor. In fact, Caterpillar’s recitation of the ’538 patent’s description of these elements
`
`appears to confirm that the features are conventional. See Opp. 4; cf. Weisner v. Google LLC, 51
`
`F.4th 1073, 1083-84 (Fed. Cir. 2022) (“The specification describes the components and features
`
`listed in the claims generically, supporting the conclusion that these components and features are
`
`conventional, not inventive concepts in the patents.”). Each of the components identified in
`
`Caterpillar’s description is either generic (e.g., the engine is “a power source”) or conventional
`
`(e.g., the variable transmission has “hydrostatic, mechanical, or hydromechanical drive
`
`arrangement[s].”). The passage even admits that the described rotor has “typical applications.”
`
`Caterpillar’s arguments show the components lack an inventive concept and align with Wirtgen’s
`
`original contention that these components are conventional. See Mot. 1, 6-7, 11.
`
`C.
`
`The arrangement of the components is conventional and the components
`operate according to the components’ conventional functions.
`
`Caterpillar does not identify any unconventional aspect of the combination of the elements.
`
`Caterpillar just says “[t]hose components undergo state changes, including to engine speed,
`
`transmission gear ratio, and the clutch must disengage the rotor from the engine.” Opp. 17. But no
`
`evidence suggests the mechanical components operate in a way other than their ordinary function.
`
`The algorithm selects pre-existing operating parameters and the machine performs those
`
`parameters as normal. An operator could choose the same conditions and achieve the same result.
`
`While an inventive concept may be found in the arrangement of the claim elements, this
`
`occurs where the arrangement is unconventional and “achieves more than the expected sum” of
`
`the hardware and software functions provided by each element. Universal Secure Registry, 10
`
`F.4th at 1353. Caterpillar identifies nothing like that here, nor can it. The purportedly inventive
`
`8
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`

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`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 13 of 16 PageID #: 39153
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`feature—the feature that led to allowance—is the result that the controller operates those
`
`conventional elements to adjust the engine speed and gear ratio to improve fuel efficiency while
`
`maintaining a desired rotor speed. A result, without more, is not an inventive concept; it is merely
`
`the abstract idea itself. See American Axle, 967 F.3d at 1299.
`
`IV. There are no claim construction issues that bear on eligibility.
`
`Attempting to postpone the inevitable, Caterpillar asks the Court to defer ruling on
`
`eligibility. The principal basis for this request is Caterpillar’s contention that the claims’ reference
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`to a “rotor” somehow limits the claims to road-milling machines. See Opp. 13, 19–20.3
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`The purported claim-construction issue Caterpillar raises is irrelevant. Even if Caterpillar
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`were correct that the claims, notwithstanding their plain language, are somehow limited to road-
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`milling machines, that would not matter: “the prohibition against patenting abstract ideas ‘cannot
`
`be circumvented by attempting to limit the use of the formula to a particular technological
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`environment’ or adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–
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`11 (2010) (quoting Diehr, 450 U.S. at 191–92). A claim to a machine that accomplishes an abstract
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`result, without more, is still ineligible even if it is limited to a particular type of machine.4
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`V. The Court should dismiss this case with prejudice.
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`Caterpillar requests in the alternative for leave to amend the Complaint to allege additional
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`facts. That request should be denied because Caterpillar’s amendments would be futile. “The
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`claims of the patents say what they say,” and amendment would therefore “not change” the
`
`
`3 Caterpillar’s suggestion that Wirtgen’s motion is premature is belied by its cross-motion
`for judgment on the pleadings. That amounts to a tacit agreement that the eligibility issue is ripe
`for determination at this stage. This is an issue of law that can and should be resolved now.
`4 Put differently, “the absence of complete preemption does not demonstrate patent
`eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
`contra Opp. 14 (incorrectly arguing that “[c]laim 13 is not abstract because it does not seek to
`preempt other uses of the so-called algorithm or equation”).
`
`9
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`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 14 of 16 PageID #: 39154
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`eligibility analysis. Recentive Analysis, Inc. v. Fox Corp., 692 F. Supp. 3d 438, 457 (D. Del. 2023).
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`Caterpillar points to a declaration from its expert Dr. Reinholtz. See Opp. 20. Caterpillar
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`has not proposed any specific amendments, but instead appears to suggest that it would add
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`allegations based on the declaration of its expert Dr. Reinholtz. But Dr. Reinholtz’s step-one
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`analysis does nothing more than regurgitate the point that several claim elements are physical
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`elements and disagree with Wirtgen’s assessment of the scope of the claims. D.I. 219 ¶¶ 14-20.
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`This testimony adds nothing to the statements in the patents, and—as explained above—the
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`dispute about whether the claims are limited to a milling machine is irrelevant to eligibility.
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`For step two, Dr. Reinholtz does not provide any opinions that could demonstrate that the
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`claims have an inventive concept (even if those opinions are accepted as true). Dr. Reinholtz
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`describes the IPR proceeding, id. ¶¶ 22, 25; identifies the functional results recited in the claim,
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`id. ¶ 23; and recites conclusions without any facts. Id. ¶¶ 21, 24. For example, paragraph 24 says
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`that the mechanical components’ ordinary functions constitute an unexplained “state change” and
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`repeats the steps of the algorithm (the abstract idea). That conclusory testimony does not move the
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`needle on eligibility at all. “[G]eneralized assertions that factual considerations about the state of
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`the art preclude a decision at the pleadings stage do not prevent a district court from granting a
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`motion to dismiss.” Beteiro, 2024 WL 3077636, at *6; see also Sanderling Management Ltd. v.
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`Snap Inc., 65 F.4th 698, 706 (Fed. Cir. 2023) (district court was not required to credit “conclusory
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`statements that the claimed steps were not well-known, routine, and conventional”). And
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`Caterpillar has not identified any other facts it would allege given the opportunity to amend.
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`In short, the claims “say what they say.” Recentive Analysis, 692 F. Supp. 3d at 457. They
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`are directed to a functional result, fail to describe any specific innovative mechanism by which
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`that result is achieved, and otherwise fail to recite any inventive concept.
`
`10
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`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 15 of 16 PageID #: 39155
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`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Plaintiff Wirtgen America, Inc.
`
`
`Dated: July 2, 2024
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
`
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`William H. Milliken
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`wmilliken@sternekessler.com
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 431 Filed 07/02/24 Page 16 of 16 PageID #: 39156
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on July 2, 2024, I caused the foregoing document to be served by email
`
`upon the following counsel:
`
`
`
`
`
`
`
`
`
`
`
`Lucy Yen
`Michelle Dang
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`lyen@wsgr.com
`mdang@wsgr.com
`
`Matthew A. Macdonald
`Naoya Son
`Alexander Turner
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 East Third Street, Suite 100
`Los Angeles, CA 90013
`matthew.macdonald@wsgr.com
`nson@wsgr.com
`aturner@wsgr.com
`ndesai@wsgr.com
`
`caterpillar@wsgr.com
`
`
`
`
`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Alexis N. Stombaugh (No. 6702)
`Rodney Square
`100