Case 1:17-cv-00770-JDW Document 445 Filed 08/19/24 Page 1 of 7 PageID #: 40690
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR, INC.,
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`Defendant.
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`Case No. 1:17-cv-00770-JDW
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`MEMORANDUM
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`In our legal system, we resolve disputes with trials. Cross-examination at trial
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`animates the truth-seeking function. I conducted a trial in this case, in part to a jury and
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`in part to me. When the jury trial concluded, the Parties told me that they were done
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`presenting evidence, even though I still had to resolve certain equitable defenses. In
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`posttrial briefing about those equitable defenses, Caterpillar, Inc. has submitted new
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`evidence, in the form of expert declarations. But it’s too late for new evidence.
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`Caterpillar hasn’t shown a basis for me to reopen the record (or even asked). Even if it
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`could make such a showing, the declarations that it offers would not be admissible, for
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`several reasons. I will therefore grant the motion to strike those declarations that
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`Wirtgen America, Inc. filed.
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`I.
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`BACKGROUND
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`At the final pretrial conference in this case, I ruled that Caterpillar’s equitable
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`defenses were issues for me to resolve, not the jury. I presided over an eight-day jury
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`trial that concluded on February 22, 2024. The jury found that Caterpillar infringed
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`certain of Wirtgen’s patents.
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`Following the verdict, I asked Caterpillar if there was “still more evidence … to
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`present” on its equitable defenses. (Trial Tr. 2275:22-24.) Caterpillar told me it didn’t
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`think it needed to present any further evidence but reserved its right to “double check.”
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`(Id. 2275:25 – 2276:7.) I instructed the Parties to “talk about what additional time you
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`need with me, whether that [is] we need another hearing … [or] briefing” and gave them
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`two weeks to file proposed schedules. (Id. 2276:16-19.) On March 8, 2024, Caterpillar
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`filed its proposed briefing schedule, making no mention of an evidentiary hearing.
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`(D.I. 347.) In light of the Parties’ proposals, I did not schedule an evidentiary hearing on
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`any post-trial issue.
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`When Caterpillar filed its Motion Regarding Estoppel Defenses, it appended two
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`declarations—one from Dr. Andrew W. Smith and one from Dr. Richard W. Klopp. (D.I.
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`Nos. 367, 368.) When Wirtgen responded to Caterpillar’s motion, it filed a motion to
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`strike those declarations. Caterpillar replied, and the Motion is ripe for disposition.
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`2
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`II.
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`ANALYSIS1
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`A.
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`Re-Opening The Record
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`Caterpillar’s submission of the two declarations would have me reopen the record
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`to admit additional evidence. The decision to reopen the record following a trial is in the
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`“sound discretion” of the judge. Zenith Radio Corp. v. Hazeltine Rsch., Inc., 401 U.S. 321,
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`331 (1971). But that determination must avoid “perpetuating any type of injustice.”
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`Gibson v. Mayor & Council of City of Wilmington, 355 F.3d 215, 229 (3d Cir. 2004). In the
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`Third Circuit, “[i]n determining whether an ‘injustice’ will occur, the district court must
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`consider several factors, including the burden that will be placed on the parties and their
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`witnesses, the undue prejudice that may result from admitting or not admitting the new
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`evidence, and considerations of judicial economy.” Id. Prejudice will occur “if the timing
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`1 The Federal Circuit applies regional circuit law to procedural questions that are not
`themselves substantive patent law issues so long as they do not (A) pertain to patent law,
`(B) bear an essential relationship to matters committed to the Federal Circuit’s exclusive
`control by statute, or (C) clearly implicate the jurisprudential responsibilities of the Federal
`Circuit in a field within its exclusive jurisdiction. See GFI, Inc. v. Franklin Corp., 265 F.3d 1268,
`1272 (Fed. Cir. 2001). Wirtgen captions its motion a “Motion to Strike.” Those semantics
`create some confusion, both in this case and others. Federal Rule of Civil Procedure 12(f)
`provides for motions to strike certain material from a pleading. See Fed. R. Civ. P. 12(f). That
`rule applies only to certain types of pleadings, not including the expert declarations at issue
`in this Motion. But courts can entertain motions to strike beyond what Rule 12(f) provides.
`“[F]ederal judges have the inherent power to manage cases that come before them[.]”
`Williams v. Guard Bryant Fields, 535 F. App'x 205, 212 (3d Cir. 2013) (citing Link v.
`Wabash R.R. Co., 370 U.S. 626, 630 (1962)). That includes entertaining motions that a
`party captions a motion to strike but that are different in kind than the motions that
`Rule 12(f) contemplates.
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`of the reopening will deprive [the opposing party] of a reasonable opportunity to
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`respond to new evidence.” Bistrian v. Levi, 448 F. Supp. 3d 454, 484 (E.D. Pa. 2020).
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`Caterpillar did not seek leave to supplement the record with two new expert
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`declarations following trial despite having had ample opportunity to do so. It knew from
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`at least the final pretrial conference that I would make factual determinations about the
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`equitable defenses. At trial, it didn’t present evidence concerning those defenses. Then,
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`when I asked it whether it needed an opportunity to present additional evidence, it
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`declined. Now, when it turns out that Caterpillar needs to present additional evidence, it
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`submitted the two declarations without asking for permission and it is now in the
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`position of begging for forgiveness.
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`Under the circumstances, Caterpillar has not shown a basis for me to reopen the
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`record. First, it would impose a substantial burden on the Parties and the witnesses. As
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`things stand now, Caterpillar would submit trial evidence—the two declarations—
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`without permitting Wirtgen to cross-examine the witnesses. That’s unfair to Wirtgen.
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`See, e.g., Coda Dev. s.r.o. v. Goodyear Tire & Rubber Co., 667 F. Supp. 3d 567, 574 (N.D.
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`Ohio 2023). Also, in fairness to Wirtgen, I would have to permit Wirtgen to have expert
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`witnesses testify in rebuttal. Getting those experts lined up and prepared imposes a cost.
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`Second, permitting Caterpillar to reopen the record would result in substantial prejudice
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`to Wirtgen. Reopening the record, and permitting all the curative steps necessary, would
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`delay the case at a time that Wirtgen is seeking an injunction. Permitting Caterpillar to
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`delay the case, and a reckoning on Wirtgen’s injunction request, would prejudice
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`Wirtgen.
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`Third, and finally, it would be inefficient to reopen the record. It would delay the
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`resolution of a case in which the trial ended six months ago. It also impedes me. It will
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`slow me down, and my memory of trial will inevitably fade. In addition, to make factual
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`findings, I need to make credibility determinations. I can’t do so based on written
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`declarations. I therefore conclude that reopening the record would be unjust and unfair.
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`B.
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`Admissibility Of Declarations
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`Even if Caterpillar had shown a basis to reopen the record, it still has not
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`demonstrated that I could or should consider the two expert declarations. As a starting
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`point, they are hearsay: statements made out of court offered to me to prove the truth
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`of the statement. See Fed. R. Evid. 801(c). No exception applies. And, while I can relax
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`the rules of evidence during a bench trial, there’s no reason for me to do so when the
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`effect is to deprive Wirtgen of the opportunity to cross-examine Drs. Smith and Klopp
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`about the opinions in their declarations.
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`I note that the Parties briefed this issue as a motion to exclude expert testimony
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`pursuant to Federal Rule of Civil Procedure 37(c)(1). That Rule excludes previously
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`undisclosed expert testimony from being used as “evidence on a motion, at a hearing,
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`or at a trial, unless the failure was substantially justified or is harmless.” FED. R. CIV. P.
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`37(c)(1). Rule 37 is a pre-trial discovery rule. It requires that parties disclose expert
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`opinions to one another to prevent trial by surprise. See, e.g., Power v. Hewlett-Packard
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`Co., No. 2:17-CV-00154, 2021 WL 1310422, at *4 (W.D. Pa. Apr. 8, 2021) (discussing the
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`aim of Rule 26).
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`The issue here is different. Whether Caterpillar disclosed these opinions to
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`Wirtgen during discovery is beside the point. What matters is if the opinions contained
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`in Drs. Smith and Klopp’s declarations are in the record or may now be added to the
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`record. If they are in the record, Caterpillar may rely on those opinions in its proposed
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`findings of fact and I may, in my discretion, choose to adopt those facts. See FED. R. CIV.
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`P. 52(a)(1).
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`In other words, contrary to how Wirtgen styled its Motion, nothing is being struck
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`or taken away. Rather, with trial in the rearview mirror, I have discretion to decide if
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`something now gets added. Because that supplementation would prejudice Wirtgen
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`and slow down the case, I won’t allow it.
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`III.
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`CONCLUSION
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`If Caterpillar had more evidence that it thought it needed to present, it should
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`have told me that when I asked. It didn’t. Instead, it tried to jam additional evidence into
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`the record without permission and without giving Wirtgen an opportunity to address
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`the evidence or cross-examine the witnesses. That’s not how trials work, and I won’t
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`permit Caterpillar to do so. I will therefore grant Wirtgen’s Motion and strike the
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`declarations of Drs. Smith and Klopp. An appropriate Order follows.
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`Case 1:17-cv-00770-JDW Document 445 Filed 08/19/24 Page 7 of 7 PageID #: 40696
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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`August 19, 2024
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