Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 1 of 6 PageID #: 40815
`
`
`
`
`
`DEFENDANT’S POSITION REGARDING
`PROPOSED PERMANENT INJUNCTION
`
`Pursuant to the Court’s Order (D.I. 457). Caterpillar has attached its proposed language for
`
`a permanent injunction as Exhibit A and presents here its argument in favor of its proposal.
`
`I.
`
`THE INJUNCTION MAY NOT INCLUDE MACHINES INCLUDED IN THE
`JURY AWARD OR SUPPLEMENTAL DAMAGES CALCULATION
`
`Wirtgen seeks a double recovery. Wirtgen rejected a provision addressing whether the
`
`injunction covers post-sale activities relating to infringing machines that have already been sold
`
`and are accounted for in the damages award or supplemental damages. See Ex. B (Wirtgen deleting
`
`Caterpillar proposal that “[n]othing in this order shall enjoin Caterpillar Inc.’s activity or shall
`
`require Caterpillar to breach contractual obligations (including service agreements) regarding
`
`products reflected in Exhibit 3322 or Caterpillar Inc.’s supplemental accounting, including . . .”).
`
`A patent owner that has been “awarded full compensation” in damages for infringing products “is
`
`not entitled to enjoin their use.” Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1549 (Fed. Cir.
`
`1987). Wirtgen recognized that damages are an “alternative” to an injunction, conceding that an
`
`injunction cannot apply to products for which it is fully compensated through damages. See D.I.
`
`456 at 62; D.I. 372 at 21-23.
`
`The jury award and supplemental damages fully compensate Wirtgen. Wirtgen
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`C.A. No. 17-770-JDW
`
`
`
`
`)))))))))
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`

`

`Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 2 of 6 PageID #: 40816
`
`
`
`received full compensation when it was awarded what it asked for: “a lump sum royalty”
`
`(representing what “Caterpillar would have paid when the hypothetical negotiation concluded and
`
`Caterpillar obtained the license”) and supplemental damages to “cover sales . . . through the date
`
`of the entry of judgment.” D.I. 456 at 63-64; see Amstar, 823 F.2d at 1549. Wirtgen now believes
`
`that the prohibition on double recovery “applies only after a patentee has actually collected on a
`
`damages award.” Ex. C. Wirtgen cites Glenayre Electronics, Inc. v. Jackson, 443 F.3d 851, 873
`
`(Fed. Cir. 2006), in which the court denied a patent owner damages for indirect infringement in a
`
`second suit after it already received the damages it requested for direct infringement in a first suit.
`
`While payment of damages might be a sufficient condition for an implied license to arise, it is not
`
`a necessary one. Wirtgen also cites Fuji Photo Film Co. v. International Trade Commission, 474
`
`F.3d 1281, 1294–95 (Fed. Cir. 2007), which is a non-analogous case about reconstruction.
`
`The damages award need not be paid to preclude double recovery. See Amstar, 823 F.2d at
`
`1549 (an award of “full compensation” was sufficient to preclude an injunction on the same
`
`products) (citing Wagner Sign Serv. v. Midwest News Reel Theatres, 119 F.2d 929, 930 (7th Cir.)
`
`(despite the plaintiff having “received no compensation,” the “decree in its favor for an accounting
`
`of all profits and damages” and a bond prevented an injunction)); Odetics, Inc. v. Storage Tech.
`
`Corp., 14 F. Supp. 2d 785, 800 (E.D. Va. 1998), aff’d, 185 F.3d 1259 (Fed. Cir. 1999) (despite the
`
`plaintiff’s contention that it had “not been fully compensated” because the defendant had “not yet
`
`paid the judgment,” an implied license arose when “the jury required [the defendant] to pay
`
`damages,” and any uncertainty regarding payment could be solved by requiring the defendant “to
`
`post a bond or provide some other satisfactory guarantee of payment”). There is no uncertainty
`
`here. Caterpillar is prepared to pay the damages award. Caterpillar intends to post a bond for the
`
`full amount of the assessed damages pending any appeal. Fed. R. Civ. P. 62(b).
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 3 of 6 PageID #: 40817
`
`
`
`The injunction necessarily excludes machines accounted for in the jury’s award of
`
`damages. The injunction should exclude Caterpillar’s activity regarding the machines listed in
`
`Exhibit 3322 for which the jury “awarded a lump sum royalty”—i.e., full compensation. See D.I.
`
`346; Trial Ex. 3322. Wirtgen’s request to enjoin these products is a double recovery.
`
`Caterpillar is not seeking to sell new infringing machines. Rather, it is seeking to provide
`
`support and services to third parties who previously purchased machines. Products for which
`
`damages have been awarded should be treated as licensed products subject to no restrictions,
`
`including on shipping or distributing, re-sale, or on providing sales support to dealers (including
`
`rebates to dealers upon re-sale of machines to the end user), financing, servicing (including
`
`technical support and repair services), replacement parts, or training relating to such products. See,
`
`e.g., Aero Products Int'l, Inc. v. Intex Recreation Corp., 2004 WL 2091996, at *1 (N.D. Ill. Sept.
`
`16, 2004) (where plaintiff is entitled to “damages calculated by an accounting of infringing sales .
`
`. . through the entry of an injunction,” the injunction “will not preclude the resale of infringing
`
`products for which [defendant] has already paid damages, as well as infringing products which are
`
`disclosed in an accounting to determine additional damages”); Odetics, 14 F. Supp. 2d at 800 (a
`
`jury’s award of damages “for the sale of . . . thirty systems” gave rise to “implied license as to
`
`them,” and the defendant was “permitted to continue routine service and repair of all systems
`
`owned by its customers”); King Instrument Corp. v. Otari Corp., 814 F.2d 1560, 1564 (Fed. Cir.
`
`1987) (vacating an injunction that extended to repair parts where the court ordered damages as to
`
`past infringing machine sales, providing “an implied license on those sales”).
`
`The injunction should exclude machines accounted for in Caterpillar’s supplemental
`
`accounting. The products excluded from the injunction include both the machine sales addressed
`
`at trial and the sales that occurred afterwards but before the entry of an injunction. For this purpose,
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 4 of 6 PageID #: 40818
`
`
`
`the Court contemplates supplemental damages covering the period through September 30, 2024.
`
`See D.I. 457 at 1. All products sold and accounted for are licensed (by payment of damages), and,
`
`for the same reasons noted above, Wirtgen may not obtain a double recovery by also obtaining an
`
`injunction. See supra; see, e.g., Aero Products, 2004 WL 2091996, at *1 (exempting from an
`
`injunction “infringing products which are disclosed in an accounting); Accentra Inc. v. Staples,
`
`Inc., 851 F. Supp. 2d 1205, 1239 (C.D. Cal. 2011), aff’d in part, rev’d in part on other grounds
`
`and remanded, 500 F. App’x 922 (Fed. Cir. 2013) (exempting from an injunction post-verdict
`
`inventory reflected in an accounting).
`
`Wirtgen has been fully compensated by damages for the machines that have already been
`
`sold. Principles of law and equity weigh against requiring Caterpillar to violate its obligations to
`
`third parties who were not involved in this lawsuit.
`
`II.
`
`THE INJUNCTION SHOULD CLARIFY SCOPE REGARDING RM MACHINES
`
`The injunction should clarify how the RM machines infringe claim 22 of the ’530 patent.
`
`Injunctions must define the enjoined acts that “relate to particular, adjudicated infringing
`
`products.” Macom Tech. Sols. Holdings, Inc. v. Infineon Techs. AG, 881 F.3d 1323, 1332 (Fed.
`
`Cir. 2018). During the jury trial on claim 22 of the ’530 patent, the jury saw evidence of two
`
`different display features on the RM machines. Feature A was illustrated in Trial Exhibit 2996A,
`
`showing an average lifting position of the rear two legs. Feature B was illustrated in Trial Exhibits
`
`4656 and 4657, showing the individual lifting positions (by percent) of the left and right rear legs.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 5 of 6 PageID #: 40819
`
`
`
`Feature A (Ex. 2996A): average
`value for two rear legs
`
`Feature B (Ex. 4656):
`one value for each leg
`
`One value for each leg
`
`
`
`Trial Exs. 2996A and 4656 (annotated).
`
` In its briefing for JMOL, Caterpillar argued that Feature A could not infringe claim 22 of
`
`the ’530 patent, because a screen showing an average of both legs is not “display[ing] the lifting
`
`positions of each of the lifting columns,” as required by claim 22. D.I. 381 at 18-19; D.I. 429 at
`
`10-11. When addressing a prior-art road-milling machine design having multiple sensors that was
`
`asserted against the ’530 patent in a prior proceeding, Wirtgen contended that “[d]isplaying an
`
`average of multiple signals is not the same as displaying the signal associated with [a] single
`
`sensor.” See Ex. D. But here, Wirtgen argued the opposite—i.e., a display showing an average
`
`between two sensors (Feature A) is the same as displaying a signal associated with a single sensor.
`
`D.I. 406 at 17. The Court ruled that Feature B provided substantial evidence for the jury’s verdict.
`
`D.I.456 at 22-23 (citing trial testimony discussing Trial Exhibits 4656 and 4657, illustrating
`
`Feature B). But the Court never stated that 2996A—illustrating Feature A —infringed. Because
`
`this Court relied only on evidence that Feature B was substantial evidence supporting the verdict
`
`as to claim 22, the injunction should not apply to RM machines that have Feature A but had Feature
`
`B removed.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 458 Filed 09/24/24 Page 6 of 6 PageID #: 40820
`
`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`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:
`
`Daniel C. Cooley
`FINNEGAN, HENDERSON, FARABOW, GARRETT
`& DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190
`Tel: (571) 203-2778
`
`James R. Barney
`David K. Mroz
`Jason L. Romrell
`FINNEGAN, HENDERSON, FARABOW, GARRETT
`& DUNNER LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408-4412
`
`
`
`
`
`
`
`
`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
`
`Jennifer (Celine) Liu
`Randal C. Miller
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 5th Avenue #5100
`Seattle, WA 98104
`Tel: (206) 883-2500
`
`
`Dated: September 24, 2024
`11753424 /11898.00005
`
`6
`
`