Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 1 of 14 PageID #: 39229
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.
`
`Plaintiff/Counterclaim Defendant,
`
`v.
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`CATERPILLAR INC.
`
`
`
`
`
`
`Case No. 17-770-JDW
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`
`
`Defendant/Counterclaim Plaintiff.
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`
`WIRTGEN’S MEMORANDUM IN SUPPORT OF MOTION TO STAY PROCEEDINGS
`REGARDING U.S. PATENT NO. 7,523,995
`
`
`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 17, 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
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 2 of 14 PageID #: 39230
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`
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`I.
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`NATURE AND STAGE OF THE PROCEEDINGS ..................................................... 1
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`TABLE OF CONTENTS
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`II.
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`STATEMENT OF THE FACTS ..................................................................................... 2
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`III. LEGAL STANDARDS ..................................................................................................... 2
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`IV.
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`SUMMARY OF ARGUMENT ........................................................................................ 3
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`V.
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`ARGUMENT ..................................................................................................................... 5
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`A.
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`B.
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`C.
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`A STAY WILL SIGNIFICANTLY SIMPLIFY THIS CASE BY REMOVING CLAIMS OR
`PREVENTING CONFLICTING RESULTS. ...................................................................... 5
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`THE INSTANT CASE IS AMENABLE TO A STAY BECAUSE EXPERT DISCOVERY HAS
`YET TO BEGIN. ......................................................................................................... 6
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`A STAY WILL NOT UNDULY PREJUDICE OR CREATE A CLEAR TACTICAL
`DISADVANTAGE FOR CATERPILLAR. ........................................................................ 7
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`1. Timing of the request for review. ........................................................................ 8
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`2. Timing of the request for stay. ............................................................................ 8
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`3. Status of the review proceeding. ......................................................................... 9
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`4. Relationship of the parties. ................................................................................. 9
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`VI. CONCLUSION ............................................................................................................... 10
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`ii
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 3 of 14 PageID #: 39231
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`Cases
`
`TABLE OF AUTHORITIES
`
`
`AgroFresh Inc. v. Essentiv LLC,
`No. 16-662 (MN), 2019 WL 2327654 (D. Del. May 31, 2019) ..................................................... 3
`
`Brit. Telecomms. PLC v. IAC/InterActiveCorp,
`No. 18-366-WCB, 2019 WL 4740156 (D. Del. Sept. 27, 2019) ............................................ 5, 6, 7
`
`Brit. Telecomms. PLC v. IAC/InterActiveCorp,
`No. 18-366-WCB, 2020 WL 5517283 (D. Del. Sept. 11, 2020) ........................................... passim
`
`Clinton v. Jones,
`520 U.S. 681 (1997) ........................................................................................................................ 3
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 17-871-LPS, 2019 WL 1276029 (D. Del. Mar. 20, 2019) ............................................... 6, 7, 9
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`No. 18-452-WCB, 2019 WL 3943058 (D. Del. Aug. 21, 2019) .................................................... 8
`
`Princeton Digital Image Corp. v. Konami Digit. Ent. Inc.,
`No. 12-1461-LPS-CJB, 2014 WL 3819458 (D. Del. Jan. 15, 2014) .............................................. 3
`
`Smartflash LLC v. Apple Inc.,
`621 F. App’x 995 (Fed. Cir. 2015) ................................................................................................. 7
`
`TC Tech. LLC v. Sprint Corp.,
`No. 16-153-WCB, 2021 WL 4521045 (D. Del. Oct. 4, 2021).................................................... 3, 8
`
`Other Authorities
`
`MPEP 2286.01 ................................................................................................................................ 8
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`iii
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 4 of 14 PageID #: 39232
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`Wirtgen respectfully requests the Court stay the proceedings related to U.S. Patent No.
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`7,523,995 (“the ’995 Patent”) pending resolution of the ex parte reexamination proceeding before
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`the United States Patent and Trademark Office. In April 2024, Wirtgen filed the request for ex
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`parte reexamination for claims 16, 43, and 45–63 of the ’995 Patent. On July 2, 2024, the Examiner
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`issued an Order Granting Request for Ex Parte Reexamination (“USPTO Order”). In the present
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`case, supplemental fact discovery is underway, expert discovery has not yet begun, and the Court
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`has not set a trial date. In view of the ex parte reexamination, Wirtgen seeks a stay of all deadlines
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`during and after the close of fact discovery with respect to the ’995 Patent, pending the resolution
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`of the ex parte reexamination.
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`I. Nature and Stage of the Proceedings
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`This case currently includes Caterpillar’s Counterclaims asserting infringement of the ’995
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`Patent and U.S. Patent No. 9,975,538 (“the ’538 Patent”). Caterpillar filed these counterclaims on
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`October 14, 2021, four years after Wirtgen filed its initial complaint. D.I. 43; D.I. 1. The Parties
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`previously conducted trial and dispositive motions on the Parties’ claims related to seven other
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`patents. At that time, Caterpillar’s claims for the ’995 and ’538 Patents were stayed pending inter
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`partes reviews (“IPR”). D.I. 185. Certain claims survived the IPRs, including claims 45–63 of the
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`’995 Patent and claim 13 of the ’538 Patent. After the Patent Trial and Appeal Board (“PTAB”)
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`issued the Final Written Decisions, this Court lifted the stay.
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`Supplemental fact discovery is ongoing until August 2, 2024, and a trial date has not been
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`set. D.I. 412. Opening expert reports are due September 10, 2024, and expert discovery closes
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`December 6, 2024. Id.
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`Wirtgen requested an ex parte reexamination of the ’995 Patent on April 5, 2024, and the
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`USPTO granted that request on July 2, 2024.
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`1
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 5 of 14 PageID #: 39233
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`II.
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`Statement of the Facts
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`This motion asks the Court to stay the litigation with respect to the ’995 Patent due to the
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`USPTO’s order granting ex parte reexamination for the ’995 Patent. The USPTO granted the ex
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`parte reexamination based on claims 16, 43, and 45–63—which account for 21 of the 22 claims at
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`issue in this litigation. The only other claim is claim 13 of the ’538 Patent, which has not been
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`alleged to cover the same machines as the ’995 Patent. The USPTO Order identified 26 substantial
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`new questions of patentability (“SNQs”): seven (7) SNQs submitted by Wirtgen and nineteen (19)
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`SNQs identified independently by the Examiner. Ex. A. Wirtgen’s original complaint was filed on
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`June 16, 2017. D.I. 1. Caterpillar asserted the ’995 Patent in the amended answer on October 14,
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`2021. D.I. 43. This dispute has further included several PTAB and ITC proceedings, including
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`Caterpillar asserting U.S. Patent No. 7,140,693 (“the ’693 Patent) in the ITC in Investigation No.
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`337-TA-1088, which was requested on October 26, 2017. The ’693 Patent is not related to the ’995
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`Patent, but similarly claims pivoting swing legs on milling machines.
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`Specifically for the ’995 Patent, Wirtgen filed two petitions for IPR on August 10, 2022.
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`The Board issued the Final Written Decisions for both on March 5, 2024, holding some claims
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`unpatentable and claims 45–63 not unpatentable. Wirtgen subsequently submitted a request for
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`Director Review for IPR2022-01394, which was denied on April 24, 2024. While the request for
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`Director Review was pending, Wirtgen filed the request for ex parte reexamination (April 5, 2024).
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`Ex. A (Order Granting Ex Parte Reexamination). The USPTO granted the request on July 2, 2024.
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`The next day, Wirtgen notified the Court of the USPTO’s decision. Ex. B The Parties conferred
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`regarding whether the parties would stipulate to a stay on July 9, 2024, and agreed on a deadline
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`for this motion of July 17, 2024.
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`III. Legal Standards
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`A district court has broad discretion to stay proceedings as part of its power to control its
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`2
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 6 of 14 PageID #: 39234
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`own docket. See Clinton v. Jones, 520 U.S. 681, 706 (1997). Courts typically consider three factors
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`when determining whether to grant a stay pending resolution of USPTO proceedings: “(1) whether
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`granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly
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`whether discovery is complete and a trial date has been set; and (3) whether a stay would cause
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`the non-movant to suffer undue prejudice from any delay, or allow the movant to gain a clear
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`tactical advantage.” Brit. Telecomms. PLC v. IAC/InterActiveCorp, No. 18-366-WCB, 2020 WL
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`5517283, at *2 (D. Del. Sept. 11, 2020) (quoting Princeton Digital Image Corp. v. Konami Digit.
`
`Ent. Inc., No. 12-1461-LPS-CJB, 2014 WL 3819458, at *2 (D. Del. Jan. 15, 2014)). When
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`analyzing undue prejudice, courts may consider four factors: “(1) the timing of the request for
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`review; (2) the timing of the request for a stay; (3) the status of the review proceedings; and (4)
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`the relationship of the parties.” AgroFresh Inc. v. Essentiv LLC, No. 16-662 (MN), 2019 WL
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`2327654, at *2 (D. Del. May 31, 2019).
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`The legislative history of the AIA confirms that Congress intended “for district courts to
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`be liberal in granting stays” pending post-grant review, and that “Congress intended to place ‘a
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`very heavy thumb on the scale in favor of a stay being granted’” once the patent office instituted
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`review. Brit. Telecomms., 2020 WL 5517283, at *3–5 (quoting 157 Cong. Rec. S1363 (2011)).
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`Further, “given the close parallels between inter partes review and other forms of post-grant
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`proceedings, courts have applied similar stay analysis in the context of reexaminations, such as the
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`ex parte reexamination.” TC Tech. LLC v. Sprint Corp., No. 16-153-WCB, 2021 WL 4521045, at
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`*3 (D. Del. Oct. 4, 2021).
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`IV.
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`Summary of Argument
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`All three factors favor staying the present case regarding the ’995 Patent: (1) the ex parte
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`reexamination will simplify the issues for trial; (2) discovery is ongoing and a trial date has not
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`been set; and (3) a stay will not unduly prejudice or present a clear tactical disadvantage to
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`3
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 7 of 14 PageID #: 39235
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`Caterpillar.
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`1. Simplifying issues for trial. The ex parte reexamination stands to significantly simplify the
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`issues for trial by potentially reducing the number of claims at issue in this litigation. Should
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`the USPTO hold all the challenged claims unpatentable, there will be only a single claim and
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`a single patent remaining in the case. Even if the claims are amended or not all claims are held
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`unpatentable, the reduction of the claims at issue would simplify the litigation. A stay further
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`avoids inconsistent results between the Court and USPTO and avoids a waste of resources if
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`the claims are amended. Further, the Court will have the benefit of a more fully developed
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`prosecution history for the remainder of the litigation.
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`2. Stage of proceedings. The most burdensome stages of the litigation are yet to come—trial,
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`dispositive motions, and expert discovery—and fact discovery is not finished. Further, a trial
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`date has not been set but would be, at the earliest, eight months away. D.I. 412 (setting the last
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`scheduled deadline (Reply Briefs in Dispositive/Daubert Motions) for March 7, 2025).
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`3. Undue prejudice or clear tactical disadvantage. There is no undue prejudice or clear tactical
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`disadvantage to Caterpillar. (1) Wirtgen was not dilatory in requesting the ex parte
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`reexamination. Had Wirtgen filed the ex parte reexamination request at the same time as the
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`previously filed IPR, the USPTO would likely have stayed the ex parte reexamination, creating
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`the same timing as Wirtgen’s later filing, promptly after the PTAB’s Final Written Decisions.
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`(2) Wirtgen diligently pursued notifying the Court of the ex parte reexamination, Caterpillar
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`of the intent to request the stay, and preparing this present motion. (3) The USPTO has made
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`its first findings in the reexamination proceeding—that there are numerous substantial new
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`questions of patentability. The ex parte reexamination will proceed. (4) Caterpillar has shown
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`no urgency in pursuing the claims related to the ’995 Patent, waiting four years to assert the
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`4
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 8 of 14 PageID #: 39236
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`patent, and has yet to significantly pursue injunctive relief.
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`V. Argument
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`There is a “liberal policy” in favor of stays pending post-grant proceedings. Brit.
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`Telecomms., 2020 WL 5517283, at *4.
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`A. A Stay Will Significantly Simplify this Case By Removing Claims or Preventing
`Conflicting Results.
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`The “most important” factor in determining whether to grant a stay is whether the stay is
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`“likely to simplify the issues at trial.” Id. at *9.
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`First, USPTO statistics indicate that at least some of the claims challenged will not survive
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`the review or will be amended to survive. The USPTO’s 2023 statistics indicate that 78% of claims
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`are canceled or changed when a third party’s request for ex parte reexamination is granted.1 Thus,
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`the USPTO’s review will likely remove some claims from the case or cause a change to the
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`analyses the Court and the Parties will be required to perform.2 These statistics seem particularly
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`pertinent where the USPTO has granted review based on 26 SNQs, including 19 SNQs initiated
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`sua sponte by the Examiner, which are even more likely to cancel or amend the claims.3 The claims
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`at issue in this case are unlikely to be the same at the end of the ex parte reexamination.
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`If the USPTO cancels the claims of the ’995 patent, there will only be a single patent and
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`a single asserted claim remaining in the case.4 Accordingly, “the case will unquestionably become
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`simpler.” Brit. Telecomms. PLC v. IAC/InterActiveCorp, No. 18-366-WCB, 2019 WL 4740156,
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`1 https://www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_.pdf.
`2 Wirtgen has appealed the Board’s Final Written Decision, which may further simplify the
`litigation.
`3 The USPTO’s statistics do not include blended reviews of third-party requested and
`Commissioner initiated reexaminations, but the Commissioner initiated rate (90%) is further
`informative.
`4 The only other remaining claim, claim 13 of the’538 Patent is currently challenged as
`unpatentable under 35 U.S.C. § 101 in Wirtgen’s Motion for Judgment on the Pleadings. D.I. 385.
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`5
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 9 of 14 PageID #: 39237
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`at *8 (D. Del. Sept. 27, 2019). Even if the claims are amended, “the complexion of this case will
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`change dramatically; conducting a trial on a claim that is subsequently amended is an invitation to
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`a waste of resources.” Brit. Telecomms., 2020 WL 5517283, at *9. Specifically, if the Parties
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`completed expert reports, dispositive motions, and even trial while the ex parte reexamination
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`proceeded and the proceeding ended by amending the claims, the Parties would be forced to
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`duplicate each of those burdensome steps. This situation seems likely in light of the Examiner’s
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`initial review of the request granted review not just based on seven of Wirtgen’s identified SNQs
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`but added nineteen (19) SNQs from his own review. Ex. A. The Examiner clearly sees a significant
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`risk to the patentability of the ’995 Patent at least in its current form.
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`Second, if the case is stayed, the Court will have the benefit of the record developed by
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`USPTO’s reexamination—including analysis by the Examiner and potentially the PTAB. See Brit.
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`Telecomms., 2020 WL 5517283, at *9. The Court has recognized that post-grant proceeding “may
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`produce additional prosecution history that could assist the Court in addressing the issues of claim
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`construction and validity.” Brit. Telecomms., 2019 WL 4740156, at *8; see also Ethicon LLC v.
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`Intuitive Surgical, Inc., No. 17-871-LPS, 2019 WL 1276029, at *2 (D. Del. Mar. 20, 2019).
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`Conversely, without a stay, the ex parte reexamination may instead increase the complexity of this
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`case by amending claims. “[C]onducting a trial on a claim that is subsequently amended is an
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`invitation to a waste of resources.” Brit. Telecomms., 2020 WL 5517283, at *9. Depending on
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`timing, claim amendments could necessitate supplemental expert reports, or conflict with
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`dispositive motions and trial determinations.
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`B. The Instant Case Is Amenable to a Stay Because Expert Discovery Has Yet to
`Begin.
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`Post-grant proceedings “giv[e] the PTO an opportunity to reconsider patents that have
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`become the focus of litigation, relieving the courts of some of the burdens of deciding issues of
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`6
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 10 of 14 PageID #: 39238
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`obviousness and anticipation, and saving the courts from having to adjudicate infringement claims
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`based on patents of questionable validity.” Brit. Telecomms., 2019 WL 4740156, at *3. The Parties
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`must still conduct supplemental discovery, expert discovery, dispositive motions, pre-trial, and
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`trial (whose date has not been set). Trial, and the weeks immediately preceding and following trial,
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`are typically the most burdensome periods of any litigation. See Brit. Telecomms., 2020 WL
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`5517283, at *6; see also Smartflash LLC v. Apple Inc., 621 F. App’x 995, 1005 (Fed. Cir. 2015)
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`(similar). Even when a case is “at an advanced stage,” a stay is favored where it is “likel[y] that
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`the issues for trial will be simplified by a stay.” Ethicon, 2019 WL 1276029, at *2. In Ethicon, for
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`example, the Court granted a stay even though “fact discovery [was] complete, and expert
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`discovery [was] nearly concluded,” noting that the Court would still “have the benefit of the
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`PTAB’s consideration of certain invalidity defenses.” Id. at *2–3. This case is not as far along.
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`Supplemental fact discovery is ongoing, expert discovery has not begun, and a trial date has not
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`been set (but is at least eight months away).
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`The status of the ’995 Patent is also complex with two different validity proceedings at the
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`USPTO currently pending—the ex parte reexamination and the IPR appeal. Staying the
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`proceedings for the ’995 Patent until the USPTO’s proceedings close avoids the extensive costs
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`remaining in this case.
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`C. A Stay Will Not Unduly Prejudice or Create a Clear Tactical Disadvantage for
`Caterpillar.
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`Caterpillar cannot claim undue prejudice or clear tactical disadvantage. Any prejudice
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`Caterpillar may allege exists in all stays related to ex parte reexaminations, but the law is clear that
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`such inherent prejudice is not “undue prejudice” and cannot alone defeat a motion to stay. See Brit.
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`Telecomms., 2020 WL 5517283, at *6–7. “In analyzing whether a plaintiff would suffer undue
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`prejudice (and relatedly whether a defendant would gain an unfair tactical advantage) if a stay
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`7
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 11 of 14 PageID #: 39239
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`were granted, courts in this district have examined four factors: (1) the timing of the request for
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`review; (2) the timing of the request for a stay; (3) the status of the review proceedings; and (4)
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`the relationship of the parties.” IOENGINE, LLC v. PayPal Holdings, Inc., No. 18-452-WCB,
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`2019 WL 3943058, at *5 (D. Del. Aug. 21, 2019).
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`1. Timing of the request for review.
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`Wirtgen’s timing for requesting the ex parte reexamination—before the IPR proceedings
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`closed—accomplished the same timing as filing the request concurrently with the petition for IPR.
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`When petitions for IPR and requests for ex parte reexamination are filed concurrently, the USPTO
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`typically stays the ex parte reexamination until the completion of the IPR. See MPEP 2286.01 (9th
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`ed. Rev. 31, July 2022) (indicating that the USPTO coordinates the proceedings). By filing the
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`request for ex parte reexamination before the decision on Director Review, the ex parte
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`reexamination will proceed with the same timing as if the request had been filed at the same time
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`as the petition for IPR.
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`Wirtgen’s chosen timing created no (or minimal) delay compared to filing both the request
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`for ex parte reexamination and petition for IPR concurrently, showing no delay or prejudice to
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`Caterpillar based solely on the timing of the request. Indeed, in the context of the entire litigation,
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`the delay is hardly significant compared to the numerous delays created by Caterpillar itself.
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`Moreover, even where submission of an ex parte reexamination may not be diligent, it does not
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`doom a motion for stay where “the effect of the delay has not been uniquely visited upon” the non-
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`movant. TC Tech., 2021 WL 4521045 at *8. This factor does not show undue prejudice or clear
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`tactical disadvantage to Caterpillar.
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`2. Timing of the request for stay.
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`Wirtgen notified the Court of the USPTO Order a day after the order issued. Ex. B. Wirtgen
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`further met and conferred with Caterpillar seven days after the USPTO Order issued. When
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`8
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 12 of 14 PageID #: 39240
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`Caterpillar stated it would not stipulate to the stay, Wirtgen filed this present motion a week later,
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`following an agreed deadline between the Parties (and within fifteen days of the USPTO’s Order).
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`Wirtgen has diligently pursued this Motion. This factor does not show undue prejudice or clear
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`tactical disadvantage to Caterpillar.
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`3. Status of the review proceeding.
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`The USPTO Order, reciting seven SNQs identified by Wirtgen and 19 SNQs identified by
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`the Examiner. The Examiner identified more than two times the number of SNQs on his own than
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`the Examiner identified from Wirtgen’s filing. Caterpillar is awaiting the Examiner’s office action.
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`Ultimately, there are 26 SNQs pending (the Wirtgen asserted Obviousness-Type Double Patenting
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`SNQ and 25 prior art based SNQs). There is no uncertainty whether review will be granted.
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`Although the proceeding is in the early stages, ex parte reexaminations are conducted with “special
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`dispatch,” and are conducted even quicker when there is a co-pending litigation and “will have
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`priority over all other cases.” Brit. Telecomm., 2020 WL 5517283, at *6. Due to the proceeding’s
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`special priority, any delay will be minimized to the extent possible to mitigate any prejudice to
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`Caterpillar. See id. This factor therefore does not show undue prejudice or clear tactical
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`disadvantage to Caterpillar.
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`4. Relationship of the parties.
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`The question is whether a stay presents an “emergent, nonquantifiable, or noncompensable
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`prejudice” to Caterpillar, but Caterpillar’s own behavior counsels against any need for immediate
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`resolution of its infringement claims. Ethicon, 2019 WL 1276029, at *3. Caterpillar has shown no
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`urgency in pursuing the claims of infringement of the ’995 Patent, indicating that there would be
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`no undue prejudice created by the stay. See id. at *2–3.
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`As an initial matter, Caterpillar only asserted infringement of the ’995 patent after another
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`Caterpillar patent directed toward similar swing leg technology was invalidated. Caterpillar’s
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`9
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`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 13 of 14 PageID #: 39241
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`delay in asserting the ’995 patent is underscored by the fact that the ’995 patent issued in 2009,
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`but Caterpillar did not assert the patent until 2021. Compare D.I. 1, with D.I. 43; see also ’995
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`Patent. Further, Caterpillar’s original interrogatory responses indicated Caterpillar would not
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`pursue injunctive relief, but as discussed in the status update call with the Court, Caterpillar has
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`now switched positions to belatedly assert claims to injunctive relief. For all of these reasons, time
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`is clearly not of the essence for Caterpillar’s claims. And monetary damages are not time-sensitive
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`to justify denying a motion to stay. Brit. Telecomms., 2020 WL 5517283, at *8.
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`Caterpillar’s lack of urgency pursuing its claims and any associated injunctive relief
`
`suggests there is no undue prejudice or tactical disadvantage (clear or otherwise) from a stay
`
`pending the completion of the USPTO’s ex parte reexamination.
`
`*
`
`
`
`
`
`
`
`*
`
`
`
`
`
`*
`
`Each of the factors for undue prejudice and clear tactical disadvantage shows there is
`
`minimal, if any, prejudice or tactical disadvantage if the Court grants the motion to stay. Such
`
`minimal prejudice and tactical disadvantage certainly do not rise to the level of undue. Thus, this
`
`factor is neutral or weighs in favor of granting the motion to stay.
`
`VI. Conclusion
`
`On balance, the factors weigh in favor of the Court granting Wirtgen’s motion to stay
`
`regarding the ’995 Patent. The ex parte reexamination is likely to simplify the issues before the
`
`Court by reducing the number of claims at issue or developing a significant record of the USPTO’s
`
`analysis. The most burdensome aspects of this case have yet to begin, particularly where a trial
`
`date has not been set. And there is minimal, if any, prejudice or tactical disadvantage visited upon
`
`Caterpillar by granting the stay. Wirtgen accordingly requests the Court to stay the proceedings
`
`related to the ’995 Patent until the resolution of the ex parte reexamination.
`
`
`
`
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 437 Filed 07/17/24 Page 14 of 14 PageID #: 39242
`
`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 17, 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
`
`