Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 1 of 17 PageID #: 39161
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`WIRTGEN AMERICA, INC.
`
`
`
`
`CATERPILLAR INC.
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`
`Case No. 17-770-JDW
`
`
`
`PLAINTIFF’S ANSWERING BRIEF IN OPPOSITION TO
`CATERPILLAR INC.’S MOTION FOR LEAVE TO AMEND THE SCHEDULING
`ORDER
`
`
`
`
`
`
`
`
`
`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 9, 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
`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
`
`

`

`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 2 of 17 PageID #: 39162
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`TABLE OF CONTENTS
`
`I.
`II.
`
`V.
`
`Introduction ......................................................................................................................... 1
`Caterpillar Had a Full Opportunity to Pursue Fact Discovery in This Case Before Serving
`its Final Infringement Contentions ..................................................................................... 1
`Diligence is an Essential Element of Demonstrating Good Cause to Amend. ................... 3
`III.
`IV. Wirtgen Never Agreed to Permit Caterpillar to Amend its Infringement Contentions to
`Add Accused Machines or Assert New Claims. ................................................................. 4
`Caterpillar Fails to Provide Any Reason Why the Court’s Markman Order or the IPR
`Decisions Necessitated the Addition of Accused Products or Assertion of New Patent
`Claims. ................................................................................................................................ 6
`The Pennypack Factors Do Not Save Caterpillar’s Amended Contentions. ...................... 8
`VI.
`VII. Conclusion ........................................................................................................................ 11
`
`
`
`
`
`
`
`- i -
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 3 of 17 PageID #: 39163
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Biodelivery Scis. Int’l, Inc. v. Chemo Research, S.L.,
`No. 19-444-CFC-CJB, 2020 WL 13802763 (D. Del. Feb. 20, 2020) ............................................. 4
`
`Brit. Telecomms. PLC v. IAC/InterActiveCorp,
`No. 18-366-WCB, 2020 WL 3047989 (D. Del. June 8, 2020) ....................................................... 3
`
`Chervon (HK) Ltd. v. One World Techs., Inc.,
`No. 19-1293-GBW, 2023 WL 2372938 (D. Del. Mar. 6, 2023) .................................................... 3
`
`Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio
`Inc.,
`No. 17-184-JFB-SRF, 2022 WL 608143 (D. Del. Jan. 27, 2022) .................................................. 8
`
`IXI Mobile (R&D) Ltd. v. Samsung Elecs. Co. Ltd.,
`No. 15-3752-HSG, 2019 WL 5102570 (N.D. Cal. Oct. 11, 2019) ............................................... 11
`
`Midwest Athletics and Sports Alliance v. Ricoh USA, Inc.,
`No. 19-514-JDW, 2021 WL 1907475 (E.D. Pa. May 12, 2021) .................................................... 9
`
`O2 Micro Intern. Ltd. Monolithic Power Sys., Inc.,
`467 Fed. 3d. 1355 (Fed. Cir. 2006) ........................................................................................... 4, 10
`
`Race Tires Am., Inc. v. Hoosier Racing Tire Corp.,
`614 F.3d 57 (3d Cir. 2010).............................................................................................................. 4
`
`St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co.,
`No. 04-1436-LPS, 2012 WL 1015993 (D. Del. Mar. 26, 2012) ..................................................... 4
`
`Univ. of Va. Patent Found. V. Gen. Elec. Co.,
`No. 14-51-JCH, 2019 WL 1993552 (W.D. Va. May 6, 2019) ....................................................... 8
`
`Vaxcel Int’l Co., Ltd. v. HeathCo LLC,
`No. 20-224-GBW-CJB (D. Del. June 28, 2022) ......................................................................... 8, 9
`
`Rules
`
`Fed. R. Civ. P. 15(a) ....................................................................................................................... 4
`
`Fed. R. Civ. P. 15(d) ....................................................................................................................... 4
`
`
`
`
`
`- ii -
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 4 of 17 PageID #: 39164
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`I.
`
`Introduction
`
`The Court should deny Caterpillar’s motion for leave to amend because Caterpillar has
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`not shown (and cannot show) that good cause exists to permit amendments to its infringement
`
`contentions.
`
`Caterpillar dances around the threshold issue—Caterpillar’s diligence in complying with
`
`the Court’s scheduling order that required Caterpillar to provide its final infringement
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`contentions by April 10, 2023. Caterpillar does not suggest that it obtained any new information
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`about Wirtgen’s commercial products since April 10, 2023, that warrants its proposed
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`amendments. Nor does Caterpillar suggest that it was denied the opportunity to seek fact
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`discovery from Wirtgen prior to April 10, 2023, that prevented it from including the new
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`allegations. Rather, Caterpillar attempts to excuse its lack of diligence by pointing to the Court’s
`
`March 10, 2023, claim construction decision and the co-pending IPR proceedings as somehow
`
`justifying its belated amendments. These arguments do not pass the red face test.
`
`II.
`
`Caterpillar Had a Full Opportunity to Pursue Fact Discovery in This Case Before
`Serving its Final Infringement Contentions
`
`On October 14, 2021, Caterpillar filed counterclaims alleging infringement of the ’538
`
`and ’995 patents. (D.I. 43.) On March 2, 2022, Caterpillar served its initial infringement
`
`contentions. (D.I. 85.) Caterpillar also served discovery requests for documents and inspections
`
`relating to Wirtgen’s milling machines and slip-form pavers. Before the March 30, 2023, close of
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`fact discovery, Caterpillar never raised with the Court any disputes over the scope of Wirtgen’s
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`production of documents relating to Caterpillar’s infringement allegations and never raised any
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`dispute with the Court regarding the availability of Wirtgen’s machines for inspections. It also
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`never raised any issues with the Court regarding the accessibility of technical information from
`
`Wirtgen’s WIDOS system.
`
`1
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 5 of 17 PageID #: 39165
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`As a further confirmation that Caterpillar had crystalized its infringement contentions
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`with respect to the ’538 patent and ’995 patent, Caterpillar and Wirtgen agreed to a stipulation on
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`representative products for the ’538 and ’995 patents. (D.I. 186.) The parties filed that stipulation
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`on April 12, 2023.
`
`Twenty-two (22) additional Wirtgen machines that Caterpillar seeks to add to the case1
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`were publicly available and the subject of fact discovery before the deadline for Caterpillar to
`
`serve its final infringement contentions. With respect to technical documentation, Caterpillar had
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`the same level of access to Wirtgen’s document repository system (WIDOS) that Wirtgen makes
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`available to its customers. As such, Caterpillar could readily search for technical information
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`about any Wirtgen milling machine or slip-form paver without restriction, including parts
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`manuals, instruction manuals, electrical diagrams, hydraulic diagrams, and hose diagrams.
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`Indeed, Caterpillar did so throughout this litigation to support its infringement contentions. In
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`addition, Wirtgen produced over 40,000 unique documents relating to these Wirtgen machines.
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`With respect to financial information, Wirtgen also provided sales data on all Wirtgen
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`milling machines and slip-form pavers, including the twenty-two models2 that Caterpillar seeks
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`to add to the case now. Of the twenty-two new models that Caterpillar seeks to add, all of them
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`were sold by Wirtgen prior to the close of fact discovery as evidenced by sales records Wirtgen
`
`produced to Caterpillar. In fact, seventeen of the twenty-two models were sold and marketed
`
`
`1 One machine that Caterpillar seeks to add, the W220 XFi, was released after the
`deadline for Caterpillar to serve its final infringement contentions. Accordingly, Wirtgen has
`agreed to Caterpillar’s request to add the W220 XFi as an accused product and to provide
`relevant discovery.
`2 The disputed models that Caterpillar seeks to add to the case include: the SP 15i, SP
`25i, SP 61i, SP 62i, SP 80i, SP 82i, SP 84i, SP 92i, and SP 102i slip-form pavers and the W 100
`CF, W 120 CF, W 130 CF, W 100 XFi, W 120 XFi, W 120 XTi, W 130 XFi, W 100 Fi, W 120
`Fi, W 120 FTi, W 120 ZFi, W 130 Fi, and W 207 Fi milling machines.
`
`2
`
`
`

`

`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 6 of 17 PageID #: 39166
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`prior to Caterpillar’s initial infringement contentions. And eight of the newly accused models
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`were discontinued as of the close fact discovery. In view of the discovery provided by Wirtgen,
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`there can be no argument (and Caterpillar makes none) that it was unaware of the twenty-two
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`Wirtgen models that it seeks to add to the case. Indeed, one of the machines that Caterpillar now
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`seeks to allege infringement against—the W 207 Fi—was the subject of infringement allegations
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`of the ’618 patent (Water spray). D.I. 186 at 3 (listing accused Wirtgen machines for the ’618
`
`patent).3 Put simply, the Wirtgen machines that Caterpillar seeks to add to the case are
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`indisputably old news to Caterpillar.
`
`For all these reasons, there can be no argument (and Caterpillar makes none) that it was
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`not possible for Caterpillar to include the twenty-two additional Wirtgen models in its April 10
`
`final infringement contentions. Nor does Caterpillar suggest that Wirtgen in any way impeded
`
`Caterpillar’s ability to pursue discovery into any of these machines prior to the close of fact
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`discovery on March 30, 2023.
`
`III. Diligence is an Essential Element of Demonstrating Good Cause to Amend.
`
`This Court requires motions to amend final contentions demonstrate a showing of good
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`cause and, as part of such showing, Caterpillar must demonstrate “diligence both in discovering
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`that an amendment was necessary and in moving to amend after that discovery.” Brit.
`
`Telecomms. PLC v. IAC/InterActiveCorp, No. 18-366-WCB, 2020 WL 3047989, at *2 (D. Del.
`
`June 8, 2020) (Bryson, J., sitting by designation); see also Chervon (HK) Ltd. v. One World
`
`Techs., Inc., No. 19-1293-GBW, 2023 WL 2372938, at *3 n.3 (D. Del. Mar. 6, 2023) (J.
`
`Williams) (same); Biodelivery Scis. Int’l, Inc. v. Chemo Research, S.L., No. 19-444-CFC-CJB,
`
`
`3 Caterpillar never explains why it could accuse the W 207 Fi of infringement of the ’618
`patent, but could not do so for its other patents.
`
`3
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 7 of 17 PageID #: 39167
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`2020 WL 13802763, at *1 (D. Del. Feb. 20, 2020) (Mag. J. Burke) (same). This standard hinges
`
`on the diligence of the movant and not on prejudice to the non-moving party. See St. Clair
`
`Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., No. 04-1436-LPS, 2012 WL
`
`1015993, at *5 (D. Del. Mar. 26, 2012), aff'd, 522 F. App’x 915 (Fed. Cir. 2013) (J. Stark). That
`
`diligence is essential to a showing of good cause aligns both the Third Circuit law as well as
`
`Federal Circuit law governing amendments under local patent rules. See Race Tires Am., Inc. v.
`
`Hoosier Racing Tire Corp., 614 F.3d 57, 84 (3d Cir. 2010) (“Rule 16(b)(4) focuses on the
`
`moving party’s burden to show due diligence.”); O2 Micro Intern. Ltd. Monolithic Power Sys.,
`
`Inc., 467 Fed. 3d. 1355, 1365-1366 (concluding that the validity and interpretation of local patent
`
`rules is governed by Federal Circuit law and also concluding that “good cause” for amendment
`
`requires a showing of diligence.).
`
`IV. Wirtgen Never Agreed to Permit Caterpillar to Amend its Infringement
`Contentions to Add Accused Machines or Assert New Claims.
`
`In connection with the Court lifting the stay as to the ’538 and ’995 patents, the parties
`
`agreed to supplemental discovery. The parties never discussed allowing Caterpillar to amend its
`
`contentions to make new allegations of infringement. As Garner’s Dictionary of Legal Usage
`
`explains with respect to pleadings:
`
`A supplemental pleading puts into the record matter that is material to an issue
`that has arisen after the filing of a pleading. An amended pleading, by contrast,
`puts right a matter that might have been pleaded at the time the pleading being
`amended was filed, but that was erroneously or inadvertently omitted or
`misstated.
`
`Bryan A. Garner, Garner’s Dictionary of Legal Usage 868 (3d ed. 2011); compare Fed. R. Civ.
`
`P. 15(a) (discussing amendments), with Fed. R. Civ. P. 15(d) (specifying that a supplemental
`
`pleading sets “out any transaction, occurrence, or event that happened after the date of the
`
`pleading to be supplemented”). Those pleading definitions apply equally to contentions.
`
`4
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 8 of 17 PageID #: 39168
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`Caterpillar admits that the parties agreed to supplement. D.I. 427 at 4 (using header, “After the
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`Stay Was Lifted, the Parties Agreed to Supplement Their Contentions.”). Caterpillar counsel’s
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`email to Wirtgen after the stay was lifted had the subject, “Wirtgen v. Caterpillar – Supplemental
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`Discovery,” and sought to discuss “1. Identification of each party’s written discovery that needs
`
`to be supplemented” and “2. Timetable for supplementation of written discovery.” D.I. 428, Ex.
`
`4 at p.11. Caterpillar asked for, and Wirtgen agreed to, supplementation.
`
`Wirtgen never agreed to permit Caterpillar to amend its infringement contentions to add
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`twenty-two accused products and assert three new patent claims. D.I. 427 at 10. That is why the
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`parties never discussed “any limitations” as to the claims or accused products. D.I. 428 at 1.
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`Accordingly, upon learning that Caterpillar intended to add accused products other than those
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`released after the stay of litigation, Wirtgen responded:
`
`Your request to inspect machines that were released prior to the stay is
`inconsistent with what we had discussed and agreed to previously. The first sale
`date of some of these machines go back more than a decade. Caterpillar had
`ample opportunity to inspect these machines during discovery. With the sole
`exception of the W220 XFi, Wirtgen has already produced thousands of
`documents relating to each of these machines in addition to the many documents
`pertaining to these machines being available to you in WIDOS.
`
`D.I. 428, Ex. 4 at 1 (further enumerating on a product-by-product basis the thousands of
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`documents produced prior to Caterpillar’s service of its final infringement contentions). This is
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`consistent with the parties’ Stipulation to Stay Patents for Case Narrowing Purposes:
`
`WHEREAS, the parties agreed that because all asserted claims of the ’538, ’995,
`’390, and ’391 Patents are each subject to pending IPR proceedings in the Patent
`Office, staying those patents would likely (1) substantially narrow the disputed
`issues for trial, (2) substantially reduce the burden of litigation on the parties
`(including, without limitation, reducing the amount of fact discovery needed
`regarding the parties’ respective contentions and also reducing the amount of
`expert discovery needed), and (3) realize significant judicial economies (by, for
`example, reducing the amount of dispositive motions filed with the Court as well
`as likely eliminating patents from the case entirely)[.]
`
`
`5
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`
`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 9 of 17 PageID #: 39169
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`D.I. 185 at 3.
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`The parties’ dispute regarding their agreement to supplement is irrelevant to the diligence
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`analysis.4 Notably, nowhere in its brief does Caterpillar argue that it was not in possession of the
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`thousands of documents pertaining to the belatedly accused machines or did not have WIDOS5
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`access prior to serving its final infringement contentions. Nowhere in its brief does Caterpillar
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`make any substantive argument that any discovery made after serving its final infringement
`
`contentions necessitated its proposed amendments. Because Caterpillar cannot meet the
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`threshold diligence requirement, the Court should deny its Motion.
`
`V.
`
`Caterpillar Fails to Provide Any Reason Why the Court’s Markman Order or the
`IPR Decisions Necessitated the Addition of Accused Products or Assertion of New
`Patent Claims.
`
`Caterpillar never explains how the Court’s issuance of its claim construction order or the
`
`IPR decisions demonstrate that Caterpillar was diligent in seeking leave to amend. Caterpillar’s
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`string of cited cases (at 6) where Courts permitted amendment after claim construction are of no
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`help to Caterpillar, because, unlike those litigants, Caterpillar cannot point to a change in
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`circumstances that would demonstrate diligence.
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`Claim Construction Order: Caterpillar asserts that the Court’s March 3, 2023 claim
`
`construction order “unexpectedly construed one claim of the ’995 patent differently than either
`
`Caterpillar or Wirtgen had proposed.” D.I. 427 at 2. The construed term that Caterpillar points to
`
`
`4 Caterpillar argues that “Wirtgen’s amendment of its invalidity contentions to add new
`invalidity theories is further evidence that the parties did not agree to any limitations of the sort
`that Wirtgen retroactively seeks to attribute to the May 2024 contentions.” D.I. 427 at 5 n.5. That
`is wrong. At the time that the stay was lifted, the deadline for Wirtgen to serve final invalidity
`contentions had not yet passed. D.I. 159 (setting the deadline for service of invalidity contentions
`as April 21, 2023, which was eleven days after the Court issued the stay).
`5 WIDOS is Wirtgen’s online parts catalog and, in addition to parts diagrams, includes
`PDFs of instruction manuals, hose diagrams, electrical diagrams, and hydraulic diagrams.
`
`6
`
`
`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 10 of 17 PageID #: 39170
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`is “between projecting and retracted positions relative to said machine frame.” While Caterpillar
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`calls the Court’s construction unexpected, the Court explicitly relied on Caterpillar’s explanation
`
`of the “plain and ordinary” meaning of the term. D.I. 167 at 14. It is disingenuous for Caterpillar
`
`to suggest that it was somehow surprised by the Court’s construction under these circumstances.
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`Even still, Caterpillar does not explain how that claim construction specifically justifies
`
`the two categories of amendments it seeks here. For example, Caterpillar does not explain why
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`the claim construction of this term, which appears in independent claim 45, warrants amending
`
`its infringement contentions to add dependent claims 49, 54, and 57. Nor does Caterpillar explain
`
`how it could not have asserted infringement against the additional twenty-two Wirtgen machines
`
`under Caterpillar’s understanding of the “plain and ordinary” meaning of the term when the
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`Court essentially adopted Caterpillar’s explanation of the “plain and ordinary” meaning.
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`Caterpillar seems to suggest (at 8) that boilerplate language reserving a right to amend
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`based on claim construction somehow changes the analysis and/or its obligation to put Wirtgen
`
`on fair notice of its infringement theories. Nothing under the Federal Rules, Local Rules, or the
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`Court’s scheduling order permit a party to wholesale reserve the right to do something it does not
`
`otherwise have the right to do. Caterpillar must still show how the Court’s claim constructions
`
`necessitated the proposed amendments.
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`IPR Decisions: Caterpillar’s briefing lacks any substantive explanation of why the IPR
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`decisions necessitated the addition of accused products or assertion of new patent claims.6 See,
`
`e.g., Univ. of Va. Patent Found. V. Gen. Elec. Co., No. 14-51-JCH, 2019 WL 1993552, at *5
`
`(W.D. Va. May 6, 2019) (declining to find that an adverse IPR proceeding supports adding new
`
`
`6 Neither logic nor precedent suggests that filing an IPR or ex parte reexamination
`provides notice that the patentee is asserting infringement of any particular claims, as suggested
`by Caterpillar. D.I. 427 at 9.
`
`7
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`
`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 11 of 17 PageID #: 39171
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`claims where patentee failed to adequately explain why it could not have done so prior to the IPR
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`proceeding). At no point during this litigation prior to May 24, 2024, had Caterpillar ever
`
`disclosed any intention of asserting claims 49 and 54 of the ’995 patent. And, although
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`Caterpillar asserted claim 57 of the ’995 patent in its Initial Infringement Contentions,
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`Caterpillar’s April 10, 2023, final infringement contentions dropped that claim after Caterpillar
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`had the benefit of reviewing the March 10, 2023, PTAB decision concerning the ’995 patent. The
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`only reason Caterpillar offers for why it is asserting these claims now is that they happen to be
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`three of the claims remaining after the PTAB invalidated the majority of the ’995 patent claims.
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`But Caterpillar’s PTAB loss does not justify an amendment to its final infringement contentions.
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`And Caterpillar does not point to anything specific that arose during the PTAB proceeding that
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`warrants allowing it to assert these dependent claims now.
`
`VI.
`
`The Pennypack Factors Do Not Save Caterpillar’s Amended Contentions.
`
`Contrary to Caterpillar’s implicit suggestion, “because the good cause standard is
`
`applicable here, Plaintiff cannot turn to the Pennypack factors to try to save its belatedly-filed
`
`contentions.” Vaxcel Int’l Co., Ltd. v. HeathCo LLC, No. 20-00224-GBW-CJB, Oral Order, D.I.
`
`226 (D. Del. June 28, 2022) (Ex. A). The only case Caterpillar cites (at 5-6) for that proposition
`
`is Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio
`
`Inc., No. 17-184;JFB-SRF, 2022 WL 608143 (D. Del. Jan. 27, 2022) (M.J. Fallon). But in
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`Fraunhofer, the court applied the Pennypack balancing test because the scheduling order in that
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`case did not provide a deadline for providing final contentions. 2022 WL 608143, at *2.
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`Regardless, the court found that the defendant’s disclosures during fact discovery “suffices to
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`satisfy the diligence requirement. Id. at *3. Nothing in Fraunhofer suggests that such an
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`amendment is permissible without the requisite showing of diligence. Put another way, the
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`absence of bad faith does not relieve Caterpillar of showing diligence and good cause. See Ex. A
`
`8
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 12 of 17 PageID #: 39172
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`(“[B]ecause the good cause standard is applicable here, Plaintiff cannot turn to the Pennypack
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`factors to try to save its belatedly-filed contentions.”). In any event, even if this instant motion
`
`for leave were governed by Pennypack, Caterpillar has still not met its burden.
`
`First, as detailed above, Caterpillar never explains how its actions in this case come even
`
`close to showing basic diligence. Neither the Court’s claim construction order nor the PTAB
`
`decision excuse Caterpillar’s delay in asserting infringement against twenty-two additional
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`Wirtgen machines. Nor do they excuse Caterpillar’s delay in asserting infringement of additional
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`dependent claims of the ’995 patent.
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`Caterpillar argues (at 14) that it did not willfully withhold its contentions. Taken as true,
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`what Caterpillar is apparently saying is that it did not bother to investigate Wirtgen’s products
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`for infringement until after the April 10, 2023, deadline for final infringement contentions.
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`Second, that the amendments are important to the case “because they greatly impact the
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`scope of this case and enhance Wirtgen’s liability” only emphasizes Caterpillar’s lack of
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`diligence. D.I. 428 at 9-10. Infringement theories are important to both the patentee and the
`
`accused infringer. This is why the scheduling order provided explicit deadlines for both initial
`
`and final contentions. But rather than weighing in favor of permitting the amendment, the
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`importance of the evidence only underscores Caterpillar’s lack of diligence. And, unlike in
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`Midwest Athletics and Sports Alliance v. Ricoh USA, Inc., denying Caterpillar’s motion to amend
`
`would not deprive them of arguing infringement at trial. See Midwest Athletics and Sports
`
`Alliance v. Ricoh USA, Inc., No. 19-514-JDW, 2021 WL 1907475, at *6 (E.D. Pa. May 12,
`
`2021) (noting that the Court’s construction of “input device” required identification of structure
`
`rather than software, and the patentee’s infringement contentions only identified software as the
`
`“input device”).
`
`9
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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 13 of 17 PageID #: 39173
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`Third, Caterpillar has engaged in gamesmanship.7 Contention deadlines “are designed to
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`require parties to crystallize their theories of the case early in the litigation and to adhere to those
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`theories once they have been disclosed.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467
`
`F.3d 1355, 1366 n.12 (Fed. Cir. 2006). Here, Caterpillar waited until after the parties briefed
`
`claim construction issues, after the PTAB issued IPR decisions, and after Wirtgen filed an ex
`
`parte reexamination request to provide its latest contentions. Caterpillar, armed with full
`
`knowledge of Wirtgen’s detailed invalidity positions, asserts new claims that will require
`
`Wirtgen to engage in new prior art searches and related discovery.
`
`Fourth, disruption to the case schedule is likely. Caterpillar seeks inspections of twenty-
`
`two newly accused products. Many of these machines are not currently sold by Wirtgen America
`
`and securing inspections, including for Wirtgen’s non-infringement defenses, will require
`
`securing cooperation from third parties who have those machines in their possession. Because
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`summer is the high season for road construction, the likelihood that any such inspections can be
`
`scheduled before the August 16, 2024, close of fact discovery is remote. Nor should Wirtgen be
`
`expected to foreclose any non-infringement defense it may have (or may develop) by suggesting
`
`that Wirtgen could simply agree that there is a representative machine (or machines) covering the
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`newly accused machines.
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`Fifth, Wirtgen will be prejudiced. Caterpillar asserted these new claims the same day that
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`Wirtgen served final invalidity contentions, meaning that Wirtgen must engage in another prior-
`
`art search that, due to IPR estoppel implications, will necessarily focus on machine prior art.
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`Typically, such searches require third-party discovery and time-consuming inspections to
`
`
`7 The majority of Caterpillar’s gamesmanship discussion relates to Wirtgen’s behavior,
`which is irrelevant to whether Caterpillar, as the movant, has engaged in gamesmanship.
`
`10
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 14 of 17 PageID #: 39174
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`confirm the features of the prior-art machine. Caterpillar’s lack of diligence has only exacerbated
`
`this prejudice—had Caterpillar notified Wirtgen of its intentions to add claims in a timely
`
`manner, Wirtgen would have more than a few weeks to complete this additional prior-art search.
`
`See IXI Mobile (R&D) Ltd. v. Samsung Elecs. Co. Ltd., No. 15-3752-HSG, 2019 WL 5102570, at
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`*4 (N.D. Cal. Oct. 11, 2019) (explaining that judicial economy counsels against starting over
`
`with new claims “when the case was successfully and substantially narrowed through years of
`
`PTAB proceedings (after being stayed for precisely that purpose)”).
`
`VII. Conclusion
`
`Because Caterpillar cannot show that it was diligent in accusing twenty-two new products
`
`and asserting three new claims, it cannot demonstrate good cause for amending the scheduling
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`order. And even under the Pennypack standard, Caterpillar has still failed to show why the Court
`
`should grant its motion. For the reason discussed above, the Court should deny Caterpillar’s
`
`motion, and the parties should proceed on the theories found in Caterpillar’s April 10, 2023, final
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`infringement contentions.
`
`
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`11
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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 15 of 17 PageID #: 39175
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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
`
`
`
`
`Dated: July 9, 2024
`
`Of Counsel:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`Roundabout Plaza
`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
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1101 K Street NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`
`Attorneys for Wirtgen America, Inc.
`
`
`
`
`
`
`
`
`
`
`12
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`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 16 of 17 PageID #: 39176
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 9, 2024, I caused the foregoing document to be served by
`
`email upon the following counsel:
`
`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
`
`
`
`
`
`
`
`
`
`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
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`astombaugh@ycst.com
`
`Attorneys for Plaintiff
`
`

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`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 17 of 17 PageID #: 39177
`Case 1:17-cv-00770-JDW Document 434 Filed 07/09/24 Page 17 of 17 PagelD #: 39177
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