Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 1 of 6 PageID #: 40854
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 1:17-cv-00770-JDW
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`WIRTGEN AMERICA, INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.,
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` Defendant/Counterclaim-Plaintiff.
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`WIRTGEN’S BRIEF REGARDING THE FORM OF INJUNCTION
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`Dated: September 24, 2024
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`YOUNG CONAWAY STARGATT & TAYLOR,
`LLP
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`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
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`Attorneys for Plaintiff Wirtgen America, Inc.
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`OF COUNSEL:
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`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`Roundabout Plaza
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
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` -
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` and -
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`
`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
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`

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`Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 2 of 6 PageID #: 40855
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`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Wirtgen”) submits this brief
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`regarding the form of injunction pursuant to ¶ 3(c) of the Court’s September 17 Order (D.I. 457).
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`After conferring, the parties have two disputes: (i) whether the injunction should grant
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`exceptions for infringement pertaining to the specific products underlying the jury’s damages
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`award and the Court’s award of supplemental damages; and (ii) whether the injunction should
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`include an advisory opinion for Caterpillar, Inc.’s (“Caterpillar”) potential future modifications to
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`its recycler machines (RM600/800). Both disputes stem from additional language proposed by
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`Caterpillar. Otherwise, the parties are in agreement with respect to the form of injunction. (See
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`Attachment A).
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`1.
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`Caterpillar contends that the injunction should exempt any activities it or others
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`undertake with respect to the specific products underlying the award of damages. Caterpillar’s
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`argument is that such products are now “licensed products” such that the injunction should not
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`apply to any subsequent activities undertaken with respect to those products. Caterpillar is
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`wrong. It is true, to be sure, that a “damages award, once collected, fully compensate[s]” the
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`patentee for the specific acts of direct infringement to which the award corresponds, meaning no
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`injunction as to those acts should issue. Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 873 (Fed.
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`Cir. 2006) (emphasis added). But Caterpillar has not paid—and Wirtgen has not collected—any
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`damages in this case. “An accused infringer does not acquire an implied license unless it has
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`actually paid full compensation. The entry of an infringement judgment does not in and of itself
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`confer an implied license.” Fuji Photo Film Co. v. Int’l Trade Comm’n, 474 F.3d 1281, 1294–95
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`(Fed. Cir. 2007). Because Caterpillar still owes Wirtgen damages, neither it nor its customers
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`have any implied license and there is no basis for giving Caterpillar a free pass to infringe while
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`it pursues its appeals and delays satisfaction of the judgment.
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`1
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`Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 3 of 6 PageID #: 40856
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`2.
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`The second dispute concerns Caterpillar’s proposed Section A, which essentially
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`seeks an advisory opinion on a hypothetical machine as to which the jury heard no evidence. As
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`Caterpillar’s Section A describes, the jury heard evidence of two ways in which the RM
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`machines infringe claim 22 of the ’530 patent: by displaying the position of the both front legs
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`and the average position of the back legs (the so-called “Feature A”) and by displaying the
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`positions of all four legs (the so-called “Feature B”). Caterpillar presented its non-infringement
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`argument for claim 22 based on Feature A to the jury. Tr. 1695:12–1696:25 (Rife), 1743:10–
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`1746:12 (Sorini). The jury rejected Caterpillar’s non-infringement defense. Caterpillar
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`subsequently filed for JMOL of non-infringement on claim 22, which this Court denied. D.I. 456
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`at 22–23. Now Caterpillar argues that the Court’s JMOL decision necessarily concluded that
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`Feature A does not infringe because the Court’s decision addressed only Feature B. This
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`argument is fatally flawed on multiple levels.
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`First, Caterpillar did not argue to the jury that a machine would not infringe if it had only
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`Feature A but not Feature B. Nor did Caterpillar request a special verdict form with specific
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`questions regarding infringement of Feature A versus Feature B. The argument has been
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`forfeited. See, e.g., Amgen Inc. v. Amneal Pharms. LLC, 328 F. Supp. 3d 373, 387 n.6 (D. Del.
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`2018), vacated in part on other grounds, 945 F.3d 1368 (Fed. Cir. 2020); Laymon v. Lobby
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`House, Inc., 613 F. Supp. 2d 504, 517 n.64 (D. Del. 2009). As a result of that forfeiture,
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`Caterpillar’s proposal amounts to a request for an advisory opinion on a question the jury was
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`never asked to resolve: whether a machine having only Feature A would infringe claim 22. The
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`Court lacks the authority to issue such a decision. See Laitram Corp. v. Cambridge Wire Cloth
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`Co., 919 F.2d 1579, 1581 (Fed. Cir. 1990) (holding that it is “improper[]” for a district court to
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`decide infringement by a “hypothetical[]” product); Aevoe Corp. v. AE Tech Co., C.A. No. 12-
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`2
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`Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 4 of 6 PageID #: 40857
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`0053, 2013 WL 12129862, at *1 (D. Nev. Mar. 6, 2013) (“[T]he constitutionally limited
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`jurisdiction of all federal courts does not permit this Court to opine in the abstract on questions
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`of infringement involving drawings of hypothetical products.”) (internal quotation marks
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`omitted).
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`Second, even if Caterpillar had preserved this argument in front of the jury (it did not), it
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`still forfeited the argument by failing to press the point in its JMOL brief. Caterpillar cursorily
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`argued (across two sentences) that RM machines do not infringe because on one screen “the rear
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`leg lifting positions . . . are displayed as an average height.” D.I. 381 at 12. And Caterpillar
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`asserted in a footnote that Feature B was irrelevant because it came up after Wirtgen closed its
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`case in chief. Id. at 11 n.2; see D.I. 456 at 23. But Caterpillar never pressed the point it raises
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`now: that Feature A might not infringe even if Feature B does. The argument therefore has not
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`been preserved. Cf. Pavo Sols. LLC v. Kingston Tech. Co., 35 F.4th 1367, 1380 (Fed. Cir. 2022)
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`(“Because Kingston never sought JMOL or a new trial on the grounds that the district court’s
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`curative instruction improperly reconstrued a claim limitation, it forfeited the right to seek a new
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`trial on that basis on appeal.”).
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`Third, even setting aside the forfeiture, Caterpillar errs in assuming that the jury found
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`infringement only based on Feature B. The law is the opposite: if the parties submit the “ultimate
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`issue” of liability to the jury, the court must “assume that all underlying factual issues were
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`resolved in favor of the verdict winner.” Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370
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`F.3d 1131, 1145 (Fed. Cir. 2004); accord Kelly v. Matlack, Inc., 903 F.2d 978, 980 (3d Cir. 1990).
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`The correct assumption is that the jury found both Feature A and Feature B to infringe.
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`Fourth, during the meet-and-confer process, Caterpillar asserted for the first time that
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`Wirtgen’s claim 22 infringement argument is inconsistent with Wirtgen’s claim 23 validity
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`3
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`Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 5 of 6 PageID #: 40858
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`arguments in the ITC proceeding. Caterpillar forfeited that argument long ago. It did not raise
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`this purported inconsistency during pretrial motion practice, in the pretrial order, before the jury,
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`or as a basis for requesting JMOL. It is far too late for Caterpillar to make this argument now in
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`the context of a dispute about the form of injunction. See, e.g., Ferring Pharms. Inc. v. Fresenius
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`Kabi USA, LLC, 645 F. Supp. 3d 335, 393 (D. Del. 2022) (party forfeited post-trial consideration
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`of argument by failing to include it in the pretrial order or putting on evidence of it at trial).
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`Fifth, Caterpillar’s argument that Wirtgen’s infringement theory at trial is somehow
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`inconsistent with its validity defense before the ITC is simply wrong. Caterpillar identifies a
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`statement made to distinguish a claim 23—a different claim—over the prior art. Unlike claim 22,
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`claim 23 requires that the plurality of lifting columns comprise two front and two rear lifting
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`columns and that the indicator display device be operable to display lifting position information
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`for all four columns. ’530 patent, 9:50–54. In contrast, claim 22, which depends from claim 1,
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`requires only a “plurality of lifting columns” and an indicator device capable of displaying the
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`lifting positions of each of the plurality of lifting columns. Nothing in claim 1 or claim 22
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`requires displaying the individual lifting positions of all four columns; that is what claim 23
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`requires. Caterpillar’s argument to limit the injunction to devices that display positions for all
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`four lifting columns is therefore contrary to the plain language of the claims.
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`For these reasons, the agreed portions of the proposed form of injunction should be
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`adopted and Caterpillar’s proposed additional language should be denied.
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`4
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`Case 1:17-cv-00770-JDW Document 459 Filed 09/24/24 Page 6 of 6 PageID #: 40859
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`Dated: September 24, 2024
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`OF COUNSEL:
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`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`Roundabout Plaza
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`mak@iplawgroup.com
`
`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.
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` -
`
` and -
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`
`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
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`5
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