Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 1 of 11 PageID #: 40722
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
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`WIRTGEN AMERICA, INC.,
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`
`
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
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`
`
`
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`Case No. 1:17-cv-00770-JDW
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`
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`
`
`ORDER
`
`AND NOW, this 28th day of August, 2024, upon consideration of Plaintiff Wirtgen
`
`
`CATERPILLAR, INC.,
`
`
`
`
`Defendant/Counterclaim-Plaintiff.
`
`America, Inc.’s Motion For Judgment On The Pleadings That The ‘538 Patent1 Is Invalid
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`(D.I. 385) and Defendant Caterpillar, Inc.’s Cross-Motion For Judgment On The Pleadings
`
`On Wirtgen’s Fourth Affirmative Defense (Patent Ineligibility) (D.I. 417), I note as follows.
`
`1.
`
`A motion for judgment on the pleadings is not unique to patent law, so I
`
`apply Third Circuit law. See Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil
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`Co., 308 F.3d 1167, 1182 (Fed. Cir. 2002). “After the pleadings are closed—but early
`
`enough not to delay trial—a party may move for judgment on the pleadings.” Fed. R. Civ.
`
`P. 12(c). “[J]udgment will not be granted unless the movant clearly establishes that no
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`material issue of fact remains to be resolved and that he is entitled to judgment as a
`
`
`1 U.S. Patent No. 9,975,538 (‘538 Patent).
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
`
`
`
`
`
`Case No. 1:17-cv-00770-JDW
`
`
`
`
`
`
`
`ORDER
`
`AND NOW, this 28th day of August, 2024, upon consideration of Plaintiff Wirtgen
`
`
`CATERPILLAR, INC.,
`
`
`
`
`Defendant/Counterclaim-Plaintiff.
`
`America, Inc.’s Motion For Judgment On The Pleadings That The ‘538 Patent1 Is Invalid
`
`(D.I. 385) and Defendant Caterpillar, Inc.’s Cross-Motion For Judgment On The Pleadings
`
`On Wirtgen’s Fourth Affirmative Defense (Patent Ineligibility) (D.I. 417), I note as follows.
`
`1.
`
`A motion for judgment on the pleadings is not unique to patent law, so I
`
`apply Third Circuit law. See Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil
`
`Co., 308 F.3d 1167, 1182 (Fed. Cir. 2002). “After the pleadings are closed—but early
`
`enough not to delay trial—a party may move for judgment on the pleadings.” Fed. R. Civ.
`
`P. 12(c). “[J]udgment will not be granted unless the movant clearly establishes that no
`
`material issue of fact remains to be resolved and that he is entitled to judgment as a
`
`
`1 U.S. Patent No. 9,975,538 (‘538 Patent).
`
`
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 2 of 11 PageID #: 40723
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`matter of law.” Rosenau v. Unifund Corp., 539 F.3d 218, 221 (3d Cir. 2008) (quotation
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`omitted). To make this determination, I “must view the facts presented in the pleadings
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`and the inferences to be drawn therefrom in the light most favorable to the nonmoving
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`party.” Id. (same).
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`2.
`
`I may consider materials subject to judicial notice, like patents, without
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`converting the motion into one for summary judgment. See generally Pension Benefit
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`Guaranty Corp. v. White Consolidated Industries, Inc., 998 F.2d 1192, 1196 (3d Cir. 1993);
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`Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954 n.27 (Fed. Cir. 1993).
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`3.
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`Once a patent issues, the law presumes its validity, and anyone attacking
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`that validity carries the burden of proof to show invalidity by clear and convincing
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`evidence. See 35 U.S.C. § 282; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097
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`(Fed. Cir. 2016). Patent validity under 35 U.S.C. § 101 is a question of law suitable for
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`resolution on a motion to dismiss. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1368
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`(Fed. Cir. 2018).
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`4.
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`An invention is patent-eligible if it claims a “new and useful process,
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`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court
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`interprets Section 101 to contain an implicit exception: “laws of nature, natural
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`phenomena, and abstract ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
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`573 U.S. 208, 216 (2014) (quotations omitted). Abstract ideas “are products of the mind,
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`mental steps, not capable of being controlled by others, regardless what a statute or
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` 2
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 3 of 11 PageID #: 40724
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`patent claim might say.” Berkheimer, 890 F.3d at 1375 (Lourie, J., concurring in denial of
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`rehearing en banc) (citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 (1972)).
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`5.
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`Courts use the two-step Alice framework to determine whether a patent is
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`invalid under Section 101. The Alice framework first requires a court determine whether
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`the claims at issue are “directed to” a patent ineligible concept, such as abstract ideas.
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`Alice, 573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
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`66 (2012)). If they are directed to an ineligible concept, the court considers the elements
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`of each claim, “both individually and as an ordered combination,” to determine whether
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`the additional elements amount to “significantly” more than just the abstract idea. Id. at
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`217-18 (same); see also Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021).
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`6.
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`Step 1 of the Alice framework questions if the claims at issue are directed
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`“as a whole … to [patent-ineligible] subject matter.” Enfish, LLC v. Microsoft Corp., 822
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`F.3d 1327, 1335 (Fed. Cir. 2016). I “ask[] what the patent asserts to be the focus of the
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`claimed advance over the prior art” by analyzing the language of the asserted claims
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`considered in light of the specification. Yu, 1 F.4th at 1043 (citation omitted).
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`7.
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`I look for the focus of the claim beginning with the claim language itself.
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`See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016). At-issue
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`Claim 13 depends from Claim 6. Claims 6 and 13 have a number of limits. Most identify
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`components of a generic road milling machine (machine, engine, variable transmission,
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`rotor, and clutch). (‘538 Patent at 6:55-64; 7:21-24.) These elements aren’t the focus of the
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` 3
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 4 of 11 PageID #: 40725
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`claim. The claim lists these elements with minimal description except to state their
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`relationship vis-à-vis one another. (See, e.g., id. at 6:55-64 (transmission coupled to an
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`output of the engine); 7:21-24 (clutch between the engine and the rotor).) Further, the
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`specification confirms that prior art machines had these components. (See id. at 1:34:40
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`(describing prior-art patent “Parker” disclosing a road milling machine with variable
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`transmission, engine, and rotor); 3:30-40 (clutch).) And the patent doesn’t purport to
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`improve upon these generic machine elements. These are just background actors.
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`8.
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`That the patent claims a machine doesn’t save Caterpillar at Alice Step 1.
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`Whether a patent claims a machine is not the dispositive inquiry. See Alice, 573 U.S. at
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`224. “[N]ot every claim that recites concrete, tangible components escapes the reach of
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`the abstract-idea inquiry.” In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir.
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`2016) (collecting cases); see, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
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`770 (Fed. Cir. 2019) (patent claiming “a physical machine that is quite tangible—an electric
`
`vehicle charging station” was directed at an abstract idea). To hold otherwise “would make
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`the determination of patent eligibility depend simply on the draftsman's art, thereby
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`eviscerating the rule that laws of nature, natural phenomena, and abstract ideas are not
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`patentable.” See Alice, 573 U.S. at 224 (internal quotations omitted) (cleaned up).
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`9.
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`The claim’s focus is the mechanism that adjusts the machine’s performance
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`to optimize fuel efficiency. Claim 6 recites a controller “configured to determine an engine
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`load, adjust an engine speed based on the engine load and one or more predefined
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` 4
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 5 of 11 PageID #: 40726
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`efficiency points being based at least partially on predetermined fuel consumption rates
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`and providing optimum engine speeds for different engine loads, and adjust a gear ratio
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`of the variable transmission based on the engine speed to maintain a desired rotor speed.”
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`(‘538 Patent at 6:55-64 (emphasis added).) Claim 13 recites the machine of Claim 6 with
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`the controller “being configured to selectively disengage the rotor from the engine
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`through control of the clutch.” (Id. at 7:21-24.)
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`10.
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`In other words, Claim 13 recites two functions of the controller:
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`1) determining an optimal engine speed and 2) correcting the machine to reach that
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`speed. “[A]nalyzing information by steps people go through in their minds” is an abstract
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`idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). So, if the
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`claim stopped at the first function, it would be directed to a mental process safely within
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`the abstract-idea category. But “all inventions at some level embody, use, reflect, rest
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`upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative
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`Servs., 566 U.S. at 71. As a result, “[a]t [Alice] step one, it is not enough to merely identify
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`a patent-ineligible concept underlying the claim; we must determine whether that patent-
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`ineligible concept is what the claim is ‘directed to.’” Thales Visionix Inc. v. United States,
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`850 F.3d 1343, 1349 (Fed. Cir. 2017) (internal citation omitted) (emphasis added).
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`11.
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`The key here is the second function, when the controller in Claim 13 goes
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`further; it leverages the information to fulfill its named purpose: controlling the machine’s
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`speed. The claim is “directed to” that mechanism that adjusts engine speed. For emphasis,
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` 5
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 6 of 11 PageID #: 40727
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`it is not that the controller has some ancillary capability to adjust the engine’s speed or
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`the variable transmission’s gear ratio. Rather, that capability is the controller’s entire
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`purpose. Calculating the optimal speed is a necessary precursor. But that calculation is
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`not the thrust of the claim. The “gist” of Claim 13 is the adjustment of the engine speed
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`to optimize for fuel conservation while maintaining rotor speed. Ubiquitous Connectivity,
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`LP v. Cent. Sec. Grp. - Nationwide, Inc., No. 18-CV-368-JED-CDL, 2021 WL 1970664, at *6
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`(N.D. Okla. May 17, 2021).
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`12.
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`The specification confirms this reading of the claim language. See Yu, 1 F.4th
`
`at 1043. I review “the problem facing the inventor and, ultimately, what the patent
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`describes as the invention.” ChargePoint, Inc., 920 F.3d at 767 (internal quotation omitted).
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`Prior art machines used variable transmissions to maintain a consistent rotor speed when
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`the engine’s speed changed. (See ‘538 Patent at 1:32-40 (describing prior-art patent
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`“Parker”).) But those machines did not take fuel efficiency into account. The ‘538 Patent
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`presents an “improved solution[]” for maintaining rotor speed while taking fuel
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`consumption “into consideration.” (Id. at 1:41-43.) The inventive mechanism is a
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`“controller-implemented method of controlling a machine.” (Id. at 1:52-53 (emphasis
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`added).)
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`13. When there’s a discrepancy between the actual and desired engine speed,
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`the controller “may increase or decrease the engine speed … until the optimum engine
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`speed is substantially achieved.” (Id. at 5:18-35.) Likewise, the controller may “adjust the
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` 6
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 7 of 11 PageID #: 40728
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`gear ratio … accordingly” to achieve the right rotor speed. (Id. at 5:36-56.) In sum, based
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`on reading the claim language and the specification, Claim 13’s focus is the controller’s
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`capability to adjust the engine’s speed while maintaining rotor speed.
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`14.
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`The question then becomes whether that focus is “’a specific means or
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`method that improves the relevant technology or [is] instead directed to a result or effect
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`that itself is the abstract idea and merely invoke generic processes and machinery.’”
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`CardioNet, LLC v. InfoBionic, Inc, 955 F.3d 1358, 1368 (Fed. Cir. 2020) (quoting McRO, Inc.
`
`v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)). “A patent may
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`issue ‘for the means or method of producing a certain result, or effect, and not for the
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`result or effect produced.’” McRO, Inc., 837 F.3d at 1314 (quoting Diamond v. Diehr, 450
`
`U.S. 175, 182 n.7 (1981)).
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`15.
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`Claim 13 is patent eligible because it makes a “non-abstract improvement[]
`
`to [an] existing technological process[].” Koninklijke KPN N.V. v. Gemalto M2M GmbH,
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`942 F.3d 1143, 1150 (Fed. Cir. 2019); see also Alice, 573 U.S. at 224. The controller
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`physically adjusts the machine’s operation. Modulating the engine’s speed allows the
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`machine to function more efficiently by using less fuel, which is the abstract concept.
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`Increasing efficiency is a prototypical example of an improvement to a machine. See
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`Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
`
`16.
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`Claim 13 “require[s] doing something to a [machine], not simply doing
`
`something on a [machine]” which is an important difference to the issue of patent
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` 7
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 8 of 11 PageID #: 40729
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`eligibility. Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016)
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`(emphasis in original). The latter is problematic because “such patents ‘would prohibit all
`
`other persons from making the same thing by any means whatsoever.’” McRO, Inc., 837
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`F.3d at 1314 (citation omitted). In Affinity Labs, the at-issue claim was “directed to a
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`broadcast system in which a cellular telephone located outside the range of a regional
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`broadcaster (1) requests and receives network-based content from the broadcaster via a
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`streaming signal, (2) is configured to wirelessly download an application for performing
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`those functions, and (3) contains a display that allows the user to select particular
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`content.” Affinity Labs, 838 F.3d at 1256. The Federal Circuit concluded that the “claims
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`[were] directed not to an improvement in cellular telephones but simply to the use of
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`cellular telephones as tools in the aid of a process focused on an abstract idea.” Id. at
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`1262.
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`17.
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`By contrast, Claim 13 does not invoke the road milling machine “merely as
`
`a tool.” Enfish, LLC, 822 F.3d at 1336; see also In re TLI Commc'ns LLC Pat. Litig., 823 F.3d
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`at 612. This is not “a situation where general-purpose [machine] components are added
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`post-hoc to a … mathematical equation.” Enfish, LLC, 822 F.3d at 1339.
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`18.
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`Put another way, Claim 13 doesn’t assume the normal and expected
`
`operation of a prior art milling machine. Instead, it seeks to disrupt that operation by
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`regulating the engine’s speed in a novel manner. See, e.g., SRI Int'l, Inc. v. Cisco Sys., Inc.,
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`930 F.3d 1295, 1304 (Fed. Cir. 2019) (finding patent-eligibility when claims “prevent[ed]”
`
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` 8
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 9 of 11 PageID #: 40730
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`the expected operation of a conventional computer network). Claim 13 discloses a
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`mechanism that acts upon the engine and/or rotor speed of a road milling machine.
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`19.
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`The claimed controller, with its ability to manipulate the road milling
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`machine itself, separates the ‘538 Patent from cases where data processing fails Alice Step
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`1. Those patents claimed information analysis with little else. See e.g., Elec. Power Grp.,
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`LLC, 830 F.3d at 1354 (“merely presenting the results of abstract processes of collecting
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`and analyzing information, without more … is abstract as an ancillary part of such
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`collection and analysis”); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45 (Fed.
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`Cir. 2018). To use the framework of another abstract-idea test, a human mind can
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`determine the most fuel-efficient speed with pen and paper. See Immersion Corp. v. Fitbit,
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`Inc., 313 F. Supp. 3d 1005, 1018 (N.D. Cal. 2018) (collecting cases). But that mind can’t
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`adjust a machine’s speed to achieve that fuel efficiency.
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`20.
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`Claim 13’s technological improvement is sufficiently specific. The controller
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`a) finds the engine load and b) cross-references it with a “predefined efficiency point[]” to
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`determine an optimal engine speed. Then the controller c) adjusts the engine’s speed and
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`d) changes the gear ratio of the transmission to maintain a steady rotor speed. (See ‘538
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`Patent at 6:55-64.) These four steps “transform [the] claim from one claiming only a result
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`to one claiming a way of achieving it.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
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` 9
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`(Fed. Cir. 2018).
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 10 of 11 PageID #: 40731
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`21. Wirtgen argues that Claim 13 isn’t detailed enough. I’m not persuaded. As
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`the Federal Circuit has explained, even claims that “recite[] general steps … with minimal
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`detail present in the claim limitations themselves” may still be patent-eligible. See Packet
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`Intel. LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1309 (Fed. Cir. 2020) (citing SRI Int'l, Inc.,
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`930 F.3d at 1303). The dispositive question is whether the steps are only result oriented.
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`See SAP Am., Inc., 898 F.3d at 1167. They aren’t.
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`22.
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`It’s possible that the “implementation details” Wirtgen seeks are “within the
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`routine knowledge of one of ordinary skill in the art, and ‘a patent need not teach, and
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`preferably omits, what is well known in the art.’” Visual Memory LLC v. NVIDIA Corp., 867
`
`F.3d 1253, 1261 (Fed. Cir. 2017) (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc.,
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`802 F.2d 1367, 1384 (Fed. Cir. 1986)). That’s a reasonable inference based on the
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`specification’s teaching that prior-art patent Parker used variable transmission to maintain
`
`a consistent rotor speed when the engine’s speed changed. (See ‘538 Patent at 1:32-40.)
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`And, at this stage, I draw such inferences in Caterpillar’s favor. See Visual Memory LLC,
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`867 F.3d at 1261.
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`23.
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`Because Claim 13 is “directed to a non-abstract improvement in an existing
`
`technological process[,]” it is patent eligible under Section 101. Koninklijke KPN N.V., 942
`
`F.3d at 1150. And, “[b]ecause the claims are not directed to an abstract idea under step
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`one of the Alice analysis, [I] do not need to proceed to step two of that analysis.” Enfish,
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`LLC, 822 F.3d at 1339.
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`10
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`Case 1:17-cv-00770-JDW Document 450 Filed 08/28/24 Page 11 of 11 PageID #: 40732
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`Therefore, it is ORDERED that Wirtgen America Inc.’s Motion For Judgment On
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`The Pleadings That The ‘538 Patent Is Invalid (D.I. 385) is DENIED.
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`It is FURTHER ORDERED that Caterpillar, Inc.’s Cross-Motion For Judgment On
`
`The Pleadings On Wirtgen’s Fourth Affirmative Defense (Patent Ineligibility) (D.I. 417) is
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`GRANTED to the extent that Wirtgen’s Fourth Affirmative Defense alleges that the ‘538
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`Patent is invalid under 35 U.S.C. § 101.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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`11
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