Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 1 of 21 PageID #: 39293
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`DEFENDANT CATERPILLAR INC.’S OPPOSITION TO PLAINTIFF
`WIRTGEN AMERICA, INC.’S MOTION TO STAY PROCEEDINGS
`REGARDING U.S. PATENT NO. 7,523,995
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`Jennifer (Celine) Liu
`Randal C. Miller
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 5th Avenue #5100
`Seattle, WA 98104
`Tel: (206) 883-2500
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Dated: July 31, 2024
`11680659/11898.00005
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 2 of 21 PageID #: 39294
`
`TABLE OF CONTENTS
`
`PAGE
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION .............................................................................................................. 1
`
`PROCEDURAL BACKGROUND ..................................................................................... 1
`
`FACTUAL BACKGROUND ............................................................................................. 2
`
`A.
`
`B.
`
`Wirtgen’s Two Failed IPR Challenges ................................................................... 3
`
`Wirtgen’s 2024 EPR Request ................................................................................. 3
`
`IV.
`
`ARGUMENT ...................................................................................................................... 4
`
`A.
`
`Legal Standards ....................................................................................................... 4
`
`1.
`
`2.
`
`IPR v. EPR .................................................................................................. 4
`
`Motion to Stay............................................................................................. 5
`
`B.
`
`Wirtgen Is Not Entitled to a Second Stay of this Action ........................................ 6
`
`1.
`
`Factor 1: A Stay Would Unduly Prejudice Caterpillar and Provide
`a Tactical Advantage to Wirtgen ................................................................ 7
`
`a.
`
`b.
`
`c.
`
`A Stay Will Unduly Prejudice Caterpillar Given the
`Parties’ Direct Competition ............................................................ 7
`
`Wirtgen Delayed Its EPR Request to Gain a Tactical
`Advantage ....................................................................................... 9
`
`The EPR Proceedings Will Conclude After the Likely Trial
`and After the ’995 Patent Expires ................................................. 11
`
`2.
`
`3.
`
`Factor 2: This Case Is in an Advanced Stage ........................................... 13
`
`Factor 3: A Stay Will Not Simplify the Issues ......................................... 13
`
`V.
`
`CONCLUSION ................................................................................................................. 16
`
`i
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 3 of 21 PageID #: 39295
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE(S)
`
`3G Licensing S.A. v. HTC Corp.,
`C.A. No. 17-83-GBW, 2023 WL 34553 (D. Del. Jan. 4, 2023) ..........................................6
`
`A.L.M. Holding Co. v. Akzo Nobel Surface Chemistry LLC,
`C.A. No. 13-1069-GMS, 2014 WL 12717284 (D. Del. Sept. 17, 2014) .............................5
`
`Applications in Internet Time, LLC v. Salesforce, Inc.,
`No. 3:13-cv-00628-RCJ-CLB, 2023 WL 2465805 (D. Nev. Mar. 10, 2023) ....................10
`
`Asphalt Sys., Inc. v. Unique Paving Materials, Corp.,
`No. 1:22-CV-355, 2024 WL 3361461 (N.D. Ohio July 10, 2024) ....................................13
`
`Avanos Med. Sales, LLC v. Medtronic Sofamor Danek USA, Inc.,
`No. 19-cv-02754-JMP-tmp, 2020 WL 7865959 (W.D. Tenn. Nov. 24, 2020) .............8, 12
`
`Belden Techs. Inc. v. Superior Essex Commc’ns LP,
`C.A. No. 08-63-SLR, 2010 WL 3522327 (D. Del. Sept. 2, 2010) ....................................10
`
`Boston Sci. Corp. v. Cordis Corp.,
`777 F. Supp. 2d 783 (D. Del. 2011) .....................................................................................7
`
`Brite-Strike Techs., Inc. v. E. Mishan & Sons, Inc.,
`235 F. Supp. 3d 323 (D. Mass. 2017) ..................................................................................8
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013)............................................................................................9
`
`Corteva Agriscience LLC v. Monsanto Co.,
`C.A. No. 22-1046-GBW, 2023 WL 3119968 (D. Del. Apr. 27, 2023) .............................12
`
`Cronos Techs., LLC v. Expedia, Inc.,
`C.A. No. 13-1538-LPS, 2016 WL 1089752 (D. Del. Mar. 21, 2016) .................................9
`
`Davol, Inc. v. Atrium Med. Corp.,
`C.A. No. 12-958-GMS, 2013 WL 3013343 (D. Del. June 17, 2013) ..................................6
`
`Douglas Dynamics, LLC v. Buyers Prods. Co.,
`717 F.3d 1336 (Fed. Cir. 2013)............................................................................................8
`
`Freeny v. Apple Inc.,
`No. 2:13-cv-00361-WCB, 2014 WL 3611948 (E.D. Tex. July 22, 2014)...........................9
`
`ii
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 4 of 21 PageID #: 39296
`
`G.W. Lisk Co. v. Power Packer N. Am., Inc.,
`591 F. Supp. 3d 391 (S.D. Iowa 2022) ..............................................................................10
`
`In re Freescale Semiconductor, Inc.,
`No. 875, 2008 WL 2951399 (Fed. Cir. June 25, 2008) ...............................................11, 12
`
`In re Neo Wireless, LLC Pat. Litig.,
`No. 22-MD-03034-TGB, 2024 WL 688170 (E.D. Mich. Feb. 20, 2024) ..........................13
`
`In re Vivint, Inc.,
`14 F.4th 1342 (Fed. Cir. 2021) ..........................................................................................11
`
`Kahn v. GMC,
`889 F.2d 1078 (Fed. Cir. 1989)............................................................................................6
`
`Kirsch Research & Dev., LLC v. Tarco Specialty Prods., Inc.,
`No. 20-cv-00318-ADA, 2021 WL 4555804 (W.D. Tex. Oct. 4, 2021) ...............................6
`
`Mojo Mobility, Inc. v. Samsung Elecs. Co., LTD.,
`No. 2:22-cv-00398-JRG-RSP, 2024 WL 778375 (E.D. Tex. Feb. 26, 2024) ..............13, 14
`
`Nidec Corp. v. LG Innotek Co.,
`No. 07-108, 2009 WL 3673433 (E.D. Tex. Apr. 3, 2009) .......................................4, 5, 6, 9
`
`Nippon Steel & Sumito Metal Corp. v. POSCO & POSCO Am. Corp.,
`No. 12-2429 (DMC), 2013 WL 1867042 (D.N.J. May 2, 2013) .........................................5
`
`Procter & Gamble Co. v. Team Techs., Inc.,
`No. 1:12-CV-552, 2014 WL 533494 (S.D. Ohio Feb. 11, 2014) ......................................12
`
`Ravgen, Inc. v. Quest Diagnostics, Inc.,
`No. 2:21-CV-09011-RGK-GJS, 2022 WL 2047615 (C.D. Cal. Feb. 2, 2022)............10, 12
`
`RideShare Displays, Inc. v. Lyft, Inc.,
`C.A. No. 20-1629-RGA-JLH, 2021 WL 7286931 (D. Del. Dec. 17, 2021) ........................6
`
`SenoRx, Inc. v. Hologic, Inc.,
`C.A. No. 12-173-LPS-CJB, 2013 WL 144255 (D. Del. Jan. 11, 2013) ..............................8
`
`TPK Touch Sols., Inc. v. Wintek Electro-Optics Corp.,
`No. 13-cv-02218-JST, 2013 WL 5289015 (N.D. Cal. Sept. 18, 2013) ...............................5
`
`Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns AB,
`No. 6:12-cv-224 JDL, 2014 WL 4494479 (E.D. Tex. Jan. 14, 2014) ...............................11
`
`STATUTES
`
`35 U.S.C. § 315(e)(1) .....................................................................................................................15
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 5 of 21 PageID #: 39297
`
`MPEP 2286.01 ...............................................................................................................................10
`
`MISCELLANEOUS
`
`iv
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 6 of 21 PageID #: 39298
`
`I.
`
`INTRODUCTION
`
`Wirtgen has already filed two failed Patent Office challenges, resulting in a year-long delay
`
`for resolution of the’995 Patent. Wirtgen now seeks a third bite at the apple at the Patent Office –
`
`this time through an ex parte reexamination (“EPR”) request with an indefinite stay that could last
`
`beyond the expiration of the ’995 Patent, hamstring Caterpillar’s ability to seek an injunction
`
`against its biggest competitor, and result in irreparable harm to Caterpillar in the marketplace. The
`
`latest Patent Office action is devised to gain a tactical advantage. Wirtgen knew about each of the
`
`references in its third Patent Office challenge years ago. It could have brought this challenge long
`
`ago. It chose not to. The reason is clear: Wirtgen wants to “run out the clock” on the ’995 Patent
`
`so that it can continue its infringement of the ’995 Patent unfettered.
`
`A stay will not simplify issues for the parties or the Court. Only one of two asserted patents
`
`is currently before the Patent Office. A stay will have no impact on ongoing litigation on the ’538
`
`Patent. Additionally, unlike Wirtgen’s failed IPR challenges, the reexamination result will not be
`
`subject to estoppel. Wirtgen is likely to relitigate – before this Court – defenses raised in its
`
`reexamination challenge, and a stay will only multiply and extend proceedings in the long term.
`
`Finally, this case is in a relatively advanced stage. Claim construction has been completed.
`
`The supplemental discovery period is scheduled to end on August 16. Expert reports are due in
`
`just a few short weeks.
`
`In short, none of the circumstances warrants a stay, and Wirtgen’s Motion to Stay should
`
`be denied.
`
`II.
`
`PROCEDURAL BACKGROUND
`
`The Complaint was filed on June 16, 2017. D.I. 1. Following a stay pending proceedings
`
`before the ITC, Caterpillar filed its first Answer and Counterclaims, asserting the ’538 and ’995
`
`Patents against Wirtgen. D.I. 43 (filed on Oct. 14, 2021). On April 1, 2022, Wirtgen served its
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 7 of 21 PageID #: 39299
`
`Initial Invalidity Contentions in this Action. Ex. 2. Subsequently, on August 10, 2022, Wirtgen
`
`filed two separate inter partes review (“IPR”) petitions on the ’995 Patent. Exs. 3, 4. On March
`
`10, 2023, the Patent Office instituted IPR proceedings on all ’995 Patent claims asserted against
`
`Wirtgen. D.I. 185 at 2. In light of these proceedings and the fact that they would not have
`
`concluded prior to the then-pending February 2024 trial, the parties stipulated to stay the case with
`
`respect to the ’538 and ’995 Patents (among others). Id. at 3-4. By the plain terms of the
`
`stipulation, the stay would end upon conclusion of the then-instituted IPRs. Id. at 4 (“The ’538,
`
`’995, ’390, and ’391 Patents should be stayed pending the conclusion of all pending IPRs”).
`
`Neither party agreed to a further stay based on additional Patent Office challenges, nor did Wirtgen
`
`ever suggest to Caterpillar or the Court that additional Patent Office challenges would be
`
`forthcoming. See id.
`
`On March 12, 2024, the Patent Office issued its Final Written Decisions on the IPRs for
`
`the ’995 Patent and determined that none of the currently asserted claims were unpatentable. D.I.
`
`350. On March 21, 2024, after its two IPR challenges to the ’995 Patent failed, Wirtgen argued
`
`that the stay in this Action should not be lifted because it was seeking Director Review. D.I. 356.
`
`On March 29, 2024, Wirtgen further argued that the stay should not be lifted because it planned to
`
`file an EPR request. D.I. 359. This is the first time that Wirtgen informed Caterpillar or the Court
`
`that it intended to pursue an EPR.
`
`The Court lifted the stay on April 1, 2024. D.I. 360. On April 5, 2024, Wirtgen filed its
`
`EPR on certain claims of the ’995 Patent, including those previously found patentable by the Patent
`
`Office during IPR proceedings. On July 2, 2024, the Patent Office granted the request for EPR.
`
`III.
`
`FACTUAL BACKGROUND
`
`Caterpillar has invested significant R&D resources in its swing leg technology. Its
`
`investment culminated in the Patent Office granting, among other patents, the ’995 Patent as well
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 8 of 21 PageID #: 39300
`
`as U.S. Patent No. 7,140,693 (the ’693 Patent), which Wirtgen was found to infringe in 2019. Ex.
`
`22 at 84. Caterpillar’s Complaint for infringement of the ’995 Patent has been pending for over
`
`three years. D.I. 43 (filed Oct. 14, 2021). Despite multiple attempts to invalidate the patent,
`
`Wirtgen has failed to do so.
`
`A.
`
`Wirtgen’s Two Failed IPR Challenges
`
`Wirtgen’s two IPR petitions directed at the ’995 Patent alleged that it was obvious over,
`
`inter alia, Caterpillar’s ’693 Patent (listed as “Dubay” in the petitions) and many prior art
`
`references that later reappear in its EPR request (i.e., the Bitelli, Feliz, Piccoli, Skotnikov, McColl,
`
`and McCutcheon references).1 See Exs. 3 and 4 at 20 (filed Aug. 10, 2022) (listing combinations
`
`for both petitions together). In its Final Written Decisions on both IPRs, the Patent Office found
`
`that the claims currently asserted by Caterpillar in this Action were not unpatentable. See Ex. 11
`
`at 2, 63-68, 75; Ex. 12 at 2, 72-74.
`
`B.
`
`Wirtgen’s 2024 EPR Request
`
`In April 2024, Wirtgen filed its EPR request. That EPR request was premised on invalidity
`
`theories Wirtgen had formulated at least two years ago. Indeed, on April 1, 2022, Wirtgen filed
`
`its Initial Invalidity Contentions in this Action. See Ex. 2. In those Contentions, Wirtgen disclosed
`
`the same double patenting defense at issue in its EPR request, every piece of patent prior art
`
`included in the EPR request, as well as the Gomaco Slipform Paver.2 Compare id. at 1-4 with Ex.
`
`1 at 2 (disclosing in both Bitelli 1088, Feliz, Gutman, McColl, McCutcheon, Piccoli, Skotnikov,
`
`and Whitaker patents; and Gomaco slipform pavers).
`
`1 In the IPRs, Wirtgen relied on the ’693 Patent’s PCT parent application which, by law, must
`contain a materially identical disclosure.
`
`2 Wirtgen’s 2022 Initial Invalidity Contentions referenced a Gomaco GHP-2800 Slipform
`Paver, while the 2024 EPR request referenced a Gomaco Commander Slipform Paver.
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 9 of 21 PageID #: 39301
`
`Even apart from its Invalidity Contentions, Wirtgen knew of many of the underlying
`
`references long before its April 2024 EPR request:
`
`’693 Patent: Wirtgen knew about the ’693 Patent by 2011, when its U.S. Patent No.
`
`8,047,741 issued listing the ’693 Patent as a reference. See Ex. 23.
`
`Gutman (U.S. Patent No. 3,843,274): Wirtgen knew about Gutman by 1989, when
`
`Reinhard Wirtgen’s German Patent DE2542294A1 issued listing Gutman as a reference. See Ex.
`
`13.
`
`Whitaker (U.S. Patent No. 5,127,335): Wirtgen knew about Whitaker by 2002, when its
`
`U.S. Patent No. 6,481,924 issued listing Whitaker as a reference. See Ex. 14.
`
`Piccolli (U.S. Patent Pub. No. 2003/0180092): Wirtgen knew about Piccolli by 2016, when
`
`its U.S. Patent No. 9,388,538 Patent issued listing Piccolli as a reference. See Ex. 15.
`
`Skotnikov (U.S. Patent No. 6,311,795) and Bitelli 1088 (EP 1001088): Wirtgen knew about
`
`these references by 2018, when it included them as references in IPRs filed before the Patent
`
`Office. See Exs. 16 and 17 at iii, iv.
`
`IV.
`
`ARGUMENT
`
`A.
`
`Legal Standards
`
`1.
`
`IPR v. EPR
`
`Wirtgen seeks a stay pending its EPR. An EPR is different from an IPR in important
`
`respects. For example, while there is a statutory deadline by which the Patent Office must decide
`
`whether to institute an IPR and another deadline by which it must issue its written decision, no
`
`such deadlines exist for EPRs. The absence of such a deadline makes Wirtgen’s request for a
`
`further stay – four months after a year-long stay was lifted – particularly extraordinary. Indeed,
`
`given Wirtgen’s serial filings, “[t]he potential for use of the reexamination process as a dilatory
`
`tactic must be considered.” Nidec Corp. v. LG Innotek Co., No. 07-108, 2009 WL 3673433, at *6
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 10 of 21 PageID #: 39302
`
`(E.D. Tex. Apr. 3, 2009) (“concurrent litigation and reexamination are not necessarily
`
`inappropriate” because “the fact remains that litigation and reexamination are distinct proceedings
`
`with differing parties, purposes, and procedures”).
`
`Additionally, while there is a well-established doctrine of IPR estoppel, no estoppel flows
`
`from an EPR decision. Thus, an accused infringer who files an EPR is free to rehash its EPR
`
`arguments, even if unsuccessful before the Patent Office. See TPK Touch Sols., Inc. v. Wintek
`
`Electro-Optics Corp., No. 13-cv-02218-JST, 2013 WL 5289015, at *3 (N.D. Cal. Sept. 18, 2013)
`
`(“The ex parte reexamination procedure, unlike the inter partes procedure, takes longer, is less
`
`likely to result in material changes in the litigation, and addresses only certain aspects of the case
`
`. . . Defendant will be free to re-argue invalidity before this Court following a years-long stay”);
`
`Nippon Steel & Sumito Metal Corp. v. POSCO & POSCO Am. Corp., No. 12-2429 (DMC), 2013
`
`WL 1867042, at *9 (D.N.J. May 2, 2013) (“Ex parte reexamination is the form of reexamination
`
`less likely to simplify the issues because the requesting party is not estopped from later asserting,
`
`in civil litigation, all of its invalidity arguments, even those rejected by the USPTO”).
`
`2.
`
`Motion to Stay
`
`“[T]he decision to stay an action lies within the sound discretion of the trial court.” A.L.M.
`
`Holding Co. v. Akzo Nobel Surface Chemistry LLC, C.A. No. 13-1069-GMS, 2014 WL 12717284,
`
`at *1 n.1 (D. Del. Sept. 17, 2014). Courts weigh three factors in ruling on a motion to stay: (1)
`
`whether a stay would cause the non-movant to suffer undue prejudice from any delay or allow the
`
`movant to gain a clear tactical advantage;3 (2) whether granting the stay will simplify the issues
`
`for trial; and (3) the status of the litigation, particularly whether discovery is complete and a trial
`
`3 Wirtgen misapplies the legal standard by misleadingly down playing the undeniable tactical
`advantage it gains over a direct competitor through serial delays in this litigation.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 11 of 21 PageID #: 39303
`
`date has been set. 3G Licensing S.A. v. HTC Corp., C.A. No. 17-83-GBW, 2023 WL 34553, at *2
`
`(D. Del. Jan. 4, 2023). Stays have been denied even when only a single factor weighs against it.
`
`See Davol, Inc. v. Atrium Med. Corp., C.A. No. 12-958-GMS, 2013 WL 3013343, at *6 (D. Del.
`
`June 17, 2013) (denying stay because “[w]hile the ‘issue simplification’ and ‘stage of litigation’
`
`factors suggest that a stay might serve the interests of judicial economy, the court is concerned that
`
`[the non-movant] will suffer undue prejudice should it be forced to continue competing with [the
`
`movant’s] accused products”).
`
`B.
`
`Wirtgen Is Not Entitled to a Second Stay of this Action
`
`Wirtgen is seeking a stay of the ’995 Patent for a second time. To account for pending IPR
`
`proceedings, Caterpillar’s claim for infringement of the ’995 Patent was stayed from April 2023
`
`to April 2024. D.I. 185, 360. In negotiating the earlier stay, Wirtgen never disclosed its intent to
`
`file an EPR. Promptly after the Patent Office denied the IPR challenges, Wirtgen stated its
`
`intention to file an EPR for the first time.
`
`However, Wirtgen had ample opportunity to present the same prior art references currently
`
`asserted in the reexamination before, and during, the stay. Thus, “[t]he potential for use of the
`
`reexamination process as a dilatory tactic must be considered.” Nidec Corp., 2009 WL 3673433,
`
`at *6. Like all patentees, Caterpillar is entitled to the timely enforcement of its patent rights.
`
`See Kirsch Research & Dev., LLC v. Tarco Specialty Prods., Inc., No. 20-cv-00318-ADA, 2021
`
`WL 4555804, at *2 (W.D. Tex. Oct. 4, 2021). The Federal Circuit has long held that “[r]ecognition
`
`must be given to the strong public policy favoring expeditious resolution of litigation.” Kahn v.
`
`GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989). A “delay inherently harms a non-moving party by
`
`prolonging resolution of the dispute.” RideShare Displays, Inc. v. Lyft, Inc., C.A. No. 20-1629-
`
`RGA-JLH, 2021 WL 7286931, at *2 (D. Del. Dec. 17, 2021).
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 12 of 21 PageID #: 39304
`
`As discussed below, none of the factors weighs in favor of staying this Action a second
`
`time.
`
`1.
`
`Factor 1: A Stay Would Unduly Prejudice Caterpillar and Provide a
`Tactical Advantage to Wirtgen
`
`When considering whether a stay from reexamination proceedings would cause the non-
`
`movant to suffer undue prejudice or allow the movant to gain a clear tactical advantage, courts
`
`typically consider four subfactors: (1) “the relationship of the parties,” (2) the “timing of the
`
`requests for reexamination,” (3) the “timing of the request for the stay,” and (4) the “status of the
`
`reexamination proceedings.” Boston Sci. Corp. v. Cordis Corp., 777 F. Supp. 2d 783, 789 (D. Del.
`
`2011).
`
`a.
`
`A Stay Will Unduly Prejudice Caterpillar Given the Parties’
`Direct Competition
`
`Not only does Caterpillar share the interest of all patentees in the prompt resolution of its
`
`claims, but its interest is heightened because Wirtgen and Caterpillar are fierce competitors in the
`
`milling machine market. The Wirtgen milling machines accused of infringing the ’995 Patent
`
`include the W 100/120/130 machines. These machines compete directly with Caterpillar’s PM
`
`300 series machines, which incorporate the technology of the ’995 Patent.
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 13 of 21 PageID #: 39305
`
`Ex. 5 at 31; see also Ex. 6 at 53077; Ex. 7 at 17233147; Ex. 8 at WA-0141304; Ex. 9 at 204-05
`
`(Wirtgen’s CEO describing Caterpillar as its top competitor for milling machines).
`
`“Courts have recognized that when the parties are direct competitors, there is a reasonable
`
`chance that delay in adjudicating the alleged infringement will have outsized consequences to the
`
`party asserting infringement has occurred, including the potential for loss of market share and an
`
`erosion of goodwill.” See SenoRx, Inc. v. Hologic, Inc., C.A. No. 12-173-LPS-CJB, 2013 WL
`
`144255, at *7 (D. Del. Jan. 11, 2013). That is because “[w]here two companies are in competition
`
`against one another, the patentee suffers the harm – often irreparable – of being forced to compete
`
`against products that incorporate and infringe its own patented inventions.” Douglas Dynamics,
`
`LLC v. Buyers Prods. Co., 717 F.3d 1336, 1345 (Fed. Cir. 2013); see also Avanos Med. Sales, LLC
`
`v. Medtronic Sofamor Danek USA, Inc., No. 19-cv-02754-JMP-tmp, 2020 WL 7865959, at *2
`
`(W.D. Tenn. Nov. 24, 2020) (“Courts routinely deny requests for stay during the pendency of PTO
`
`proceedings where the parties are direct competitors.”); Brite-Strike Techs., Inc. v. E. Mishan &
`
`Sons, Inc., 235 F. Supp. 3d 323, 325 (D. Mass. 2017) (denying motion to stay pending EPR where
`
`parties were direct competitors because “the long reexamination and appeals process, combined
`
`with the tactical advantage that results from such process, tilts the first factor in [patentee’s]
`
`favor”).
`
`Indeed, Wirtgen is not just any competitor: it holds a near-monopoly level market share,
`
`which multiples the debilitating effect that any non-market-based constraint would place on
`
`competition. See Ex. 7 at -3150; Ex. 10 at -9562, -9567. Additionally, the construction market in
`
`which Caterpillar and Wirtgen compete has a recognized incumbency effect – meaning once a
`
`customer buys an infringing Wirtgen machine, that customer is more likely to continue buying
`
`from Wirtgen instead of Caterpillar, thus resulting in irreparable market injury. See Ex. 18 at
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 14 of 21 PageID #: 39306
`
`133:10-134:21 (Wirtgen 30(b)(6) witness testifying to incumbency effect); Broadcom Corp. v.
`
`Emulex Corp., 732 F.3d 1325, 1336 (Fed. Cir. 2013) (affirming finding of “irreparable harm”
`
`where parties were direct competitors and infringer enjoyed “incumbency effect”).
`
`Instead of addressing the parties’ relationship, and the effect that a stay would have on its
`
`biggest competitor, Wirtgen blames Caterpillar for an alleged delay in asserting the ’995 Patent
`
`and seeking an injunction. Neither is true. Caterpillar asserted the ’995 and sought an injunction
`
`in its very first Answer in this Action filed in October 2021. D.I. 43 at 46-49, 56. It did not delay
`
`bringing this claim; rather, this Action was stayed for many years due to the parties’ litigation
`
`before the ITC.
`
`b.
`
`Wirtgen Delayed Its EPR Request to Gain a Tactical
`Advantage
`
`A “request for reexamination made well after the onset of litigation followed by a
`
`subsequent request to stay may lead to an inference that the moving party is seeking an
`
`inappropriate tactical advantage.” Cronos Techs., LLC v. Expedia, Inc., C.A. No. 13-1538-LPS,
`
`2016 WL 1089752, at *2 (D. Del. Mar. 21, 2016); see Nidec Corp., 2009 WL 3673433, at *6
`
`(denying stay where “case ha[d] been pending for over two years, and Defendants did not seek
`
`reexamination for almost nineteen months after the case was filed”); see also Freeny v. Apple Inc.,
`
`No. 2:13-cv-00361-WCB, 2014 WL 3611948, at *2 (E.D. Tex. July 22, 2014) (finding that delay
`
`of one year for IPR petition with “many of the same prior art references” identified in invalidity
`
`contentions weighed against stay).
`
`Wirtgen filed its EPR request in April 2024, nearly three years after assertion of the
`
`counterclaim, two years after serving its Invalidity Contentions, and 20 months after filing its IPRs.
`
`There is no doubt that Wirtgen could have brought its EPR request years ago: its Invalidity
`
`Contentions disclosed the same invalidity theory (obviousness-type double patenting) and the
`
`9
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 15 of 21 PageID #: 39307
`
`same references as in its EPR request two years later. By proceeding first with IPRs, failing at
`
`them, and then seeking an EPR, Wirtgen secures a tactical advantage against its biggest competitor,
`
`locking down the ’995 Patent through serial Patent Office challenges. See Ravgen, Inc. v. Quest
`
`Diagnostics, Inc., No. 2:21-CV-09011-RGK-GJS, 2022 WL 2047615, at *4 (C.D. Cal. Feb. 2,
`
`2022) (“Litigation cannot be stayed every time a claim undergoes reexamination; [f]ederal court
`
`calendars should not be hijacked in this manner.”); G.W. Lisk Co. v. Power Packer N. Am., Inc.,
`
`591 F. Supp. 3d 391, 395 (S.D. Iowa 2022) (denying motion to stay pending EPR based on prior
`
`art rejected by Patent Office in earlier IPR); Applications in Internet Time, LLC v. Salesforce, Inc.,
`
`No. 3:13-cv-00628-RCJ-CLB, 2023 WL 2465805, at *2 (D. Nev. Mar. 10, 2023) (“Defendant has
`
`requested to stay this action three times to seek examination outside this Court on the patents . . .
`
`Further dragging out this proceeding to try again at adjudicating these claims [through
`
`reexamination] creates a tactical advantage for Defendant.”) (citing Belden Techs. Inc. v. Superior
`
`Essex Commc’ns LP, C.A. No. 08-63-SLR, 2010 WL 3522327, at *2 (D. Del. Sept. 2, 2010)).
`
`Wirtgen argues that filing its EPR Request any earlier would have been pointless as the
`
`Patent Office would “likely have stayed” such an EPR Request. Op. Br. at 4, 8. Wirtgen cites no
`
`supporting authority for this statement. Contrary to Wirtgen’s suggestion, according to the Manual
`
`of Patent Examining Procedure (“MPEP”) 2286.01, when faced with concurrent EPR and IPR
`
`petitions, the Patent Office might stay, terminate, transfer, or consolidate. MPEP 2286.01. The
`
`MPEP does not state what is “likely” or “typical.” In fact, given the clear overlap in prior art and
`
`arguments between the IPR and EPR proceedings, it would have been far more efficient and likely
`
`for the Patent Office to consolidate, rule, and/or terminate the EPR. Indeed, the Patent Office has
`
`clearly stated that it will only stay an EPR if there is good cause to do so, which Wirtgen has not
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 16 of 21 PageID #: 39308
`
`shown. See Ex. 19, Gnosis S.p.A. v. Merck & CIE, Case IPR2013-00117, slip op. 2 (PTAB Apr.
`
`3, 2013) (Patent Office stating “We do not stay a reexamination in the absence of good cause.”).4
`
`Instead of letting the Patent Office decide if it was more efficient to consolidate, rule,
`
`and/or terminate simultaneous IPR and EPR petitions, Wirtgen took that decision away from the
`
`Patent Office by filing its challenges serially to gain tactical advantage, using the results of the IPR
`
`petitions to try to improve its EPR request. See In re Vivint, Inc., 14 F.4th 1342, 1353 (Fed. Cir.
`
`2021) (“allowing similar, serial challenges to the same patent, by the same petitioner, risks
`
`harassment of patent owners and frustration of Congress’s intent in enacting the [AIA]).
`
`c.
`
`The EPR Proceedings Will Conclude After the Likely Trial
`and After the ’995 Patent Expires
`
`Because the EPR is in its infancy and is expected to extend beyond the anticipated trial
`
`date and the expiration of the ’995 Patent, Caterpillar will undoubtedly be prejudiced. An EPR
`
`lasts an average of two years, with potential appeals lasting at least another 12 months. Ex. 20 at
`
`2 (“Average Pendency 25.2 mos”). Thus, if the Court enters a stay, it may not be lifted until 2027,
`
`which is a year or more after trial in this Action would likely be scheduled (subject to the Court’s
`
`availability). The loss of the anticipated trial date would prejudice Caterpillar, with no attendant
`
`benefits since claim construction has concluded and no estoppel attaches. See supra at §§ IV.A.1,
`
`IV.B.3; Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns AB, No. 6:12-cv-224 JDL, 2014 WL
`
`4494479, at *3 (E.D. Tex. Jan. 14, 2014) (denying motion to stay pending IPR where trial would
`
`occur before IPR would be completed); In re Freescale Semiconductor, Inc., No. 875, 2008 WL
`
`2951399, at *1 (Fed. Cir. June 25, 2008) (denying accused infringer’s petition for mandamus
`
`4 Wirtgen’s Motion to Stay was filed over 100 days after its EPR request. By any measure,
`the Motion to Stay is untimely because Wirtgen never indicated that it intended to file an EPR
`during negotiation of the stay or for nearly a year thereafter, even though it could have filed the
`EPR during the pendency of the stay.
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 439 Filed 07/31/24 Page 17 of 21 PageID #: 39309
`
`seeking order for ITC to stay proceedings until reexaminations concluded and stating that the
`
`“reexamination proceedings were at an early stage, that the reexamination proceedings might not
`
`reach completion before expiration of the patents, and that the Commission investigation was at
`
`an advanced stage”).
`
`Moreover, the ’995 Patent is set to expire in 2026, so a stay would deprive Caterpillar of
`
`the opportunity to seek injunctive relief against its biggest infringer, resulting in clear prejudice to
`
`Caterpillar. See Corteva Agriscience LLC v. Monsanto Co., C.A. No. 22-1046-GBW, 2023 WL
`
`3119968, at *1–2 (D. Del. Apr. 27, 2023) (denying motion to stay infringement action pending
`
`EPR where stay would delay trial date until after patent expiration, thereby precluding injunctive
`
`relief); Avanos, 2020 WL 7865959, at *3 (finding undue prejudice weighed strongly against stay
`
`because “the looming expiration” of patent-in-suit “would