Case 1:17-cv-00770-JDW Document 460 Filed 09/24/24 Page 1 of 4 PageID #: 40866
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`WILMINGTON
`RODNEY SQUARE
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`NEW YORK
`ROCKEFELLER CENTER
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`CHARLOTTE
`CARILLON TOWER
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`Adam W. Poff
`P 302.571.6642
`apoff@ycst.com
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`
`
`September 24, 2024
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`VIA CM/ECF
`
`The Honorable Joshua D. Wolson
`United States District Court
` for the Eastern District of Pennsylvania
`James A. Byrne United States Courthouse
`601 Market Street, Room 3809
`Philadelphia, PA 19106
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`Re: Wirtgen America, Inc. v. Caterpillar Inc. - C.A. No. 17-770-JDW
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`Dear Judge Wolson,
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`Pursuant to the Court’s September 17, 2024 Order (D.I. 457), Plaintiff/Counterclaim-
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`Defendant Wirtgen America, Inc. (“Wirtgen”) and Defendant/Counterclaim-Plaintiff Caterpillar
`Inc. (“Caterpillar”) submit their respective positions on whether the Court should enter a partial
`judgment in this case pursuant to Federal Rule of Civil Procedure 54(b).
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`Wirtgen’s Position
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`Wirtgen respectfully submits that the Court should enter partial final judgment on
`Wirtgen’s claims for infringement of the ’309, ’530, ’972, ’641, ’788, and ’268 patents (Counts
`I, III, VI, VII, X, and XI of Wirtgen’s Amended Complaint, see D.I. 33).1 Because the Court has
`ordered entry of an injunction against Caterpillar’s continued infringement of Wirtgen’s patents,
`there is going to be an immediate appeal no matter what. See 28 U.S.C. § 1291(a)(1). Entering
`partial judgment now will serve the interests of justice because it will permit the Federal Circuit
`to consider the merits of the judgment underlying the injunction at the same time it considers the
`propriety of the injunction itself. Delaying entry of judgment, in contrast, would require the court
`of appeals to address the issues related to Wirtgen’s claims twice—once in the appeal from the
`injunction and once in a later appeal from the judgment. That approach would create exactly the
`sort of piecemeal appeals that Rule 54(b) is designed to guard against.
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`1 This final judgment would resolve all the claims asserted in Wirtgen’s Amended
`Complaint. The remaining counts relate to patents that were dropped from this case prior to trial.
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`

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`Case 1:17-cv-00770-JDW Document 460 Filed 09/24/24 Page 2 of 4 PageID #: 40867
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`Young Conaway Stargatt & Taylor, LLP
`September 24, 2024
`Page 2
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`Rule 54(b) provides that, “[w]hen an action presents more than one claim for relief … the
`court may direct entry of a final judgment as to one or more, but fewer than all, claims … if the
`court expressly determines that there is no just reason for delay.” “Otherwise, any order … that
`adjudicates fewer than all the claims … does not end the action as to any of the claims.” Id.
`Entry of partial final judgment is appropriate if “‘(1) multiple claims for relief or multiple parties
`[are] involved; (2) at least one claim or the rights and liabilities of at least one party [is] finally
`decided; and (3) … there is no just reason for delaying an appeal.’” Super-Sparkly Safety Stuff,
`LLC v. Skyline USA, Inc., 836 F. App’x 895, 897 (Fed. Cir. 2020) (quoting Alfred E. Mann
`Found. for Sci. Rsch. v. Cochlear Corp., 841 F.3d 1334, 1347 (Fed. Cir. 2016)).
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`There can be no dispute that the first and second requirements are satisfied. This case
`involves multiple claims for relief (namely, Wirtgen’s claims against Caterpillar for infringement
`of Wirtgen’s patents and Caterpillar’s counterclaims against Wirtgen for infringement of
`Caterpillar’s patents). And the jury trial and the Court’s rulings on post-trial motions have finally
`decided the former set of claims. See id. (finding Rule 54(b) judgment proper where Plaintiff’s
`“two patent infringement claims were finally decided by the district court’s entry of summary
`judgment of noninfringement” and the defendant’s “counterclaims [were] still pending”). The
`only question, then, is whether it would serve the interests of justice to enter partial final
`judgment on Wirtgen’s claims for infringement of its patents. The answer is decidedly yes.
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`In analyzing this question, courts “consider ‘judicial administrative interests as well as
`the equities.’” Prolitec, Inc. v. Scentair Techs., LLC, 2024 WL 1213767, at *2 (D. Del. Mar. 21,
`2024) (Bryson, J.) (quoting Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 8 (1980)). In
`patent cases, courts consider in particular whether the two sets of claims are “separable” and
`“whether the nature of the claims already determined is such that no appellate court would have
`to decide the same issues more than once even if there were subsequent appeals.” Id. (cleaned
`up). “Other pertinent factors include ‘the possibility that the need for review might or might not
`be moot by future developments in the district court,’ ‘the presence or absence of a claim or
`counterclaim which could result in set-off against the judgment sought to be made final,’ and
`‘miscellaneous factors such as delay, economic and solvency consideration,’” and so on. Id.
`(quoting Berckeley Inv. Grp., Ltd. v. Colkitt, 455 F.3d 195, 203 (3d Cir. 2006)); see Allis-
`Chalmers Corp. v. Phil. Elec. Co., 521 F.2d 360, 364 (3d Cir. 1975); W.L. Gore & Assocs., Inc.
`v. Int’l Med. Prosthetics Rsch. Assocs., Inc., 975 F.2d 858, 861 (Fed. Cir. 1992).
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`Here, the relevant factors weigh strongly in favor of entry of a partial final judgment.
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`Most importantly, immediate entry of judgment on Wirtgen’s claims will ensure that the
`Federal Circuit can consider the issues related to those claims once instead of twice. As the Court
`has noted, see D.I. 456 at 65 n.10, Caterpillar has a statutory right to immediately appeal the
`injunction. Delaying entry of judgment on Wirtgen’s claims would likely require the Federal
`Circuit to consider the merits of those claims once in Caterpillar’s appeal of the injunction and
`then again in the appeal of the remainder of the judgment. It would thus create exactly the sort of
`“piecemeal appeals” that Rule 54(b) is designed to avoid, Sears, Roebuck & Co. v. Mackey, 351
`U.S. 427, 438 (1956). See Prolitec, 2024 WL 1213767, at *2. As the Third Circuit, addressing a
`similar scenario, observed, if a court of appeals “ha[s] to review the propriety of [an] injunction
`which is based on the same factual circumstances” as the underlying judgment, judicial economy
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`Case 1:17-cv-00770-JDW Document 460 Filed 09/24/24 Page 3 of 4 PageID #: 40868
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`Young Conaway Stargatt & Taylor, LLP
`September 24, 2024
`Page 3
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`counsels in favor of using Rule 54(b) to enable review of the injunction and underlying judgment
`together. Weiss v. York Hosp., 745 F.2d 786, 804 (3d Cir. 1984); see Otsuka Pharm. Co. z. Zydus
`Pharm. USA, Inc., 314 F.R.D. 372, 379 (D.N.J. 2016) (certifying judgment of non-infringement
`of one patent for immediate appeal where the claim construction on which the judgment was
`based was already immediately appealable in other cases because certification would “itself
`avoid piecemeal appeals of the same construction, enhancing judicial efficiency”).
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`Entering judgment now, on the other hand, will not likely require the reviewing court to
`consider the same issue twice. As the Court has already concluded, “Caterpillar’s counterclaims
`differ from Wirtgen’s claims” because they “relate to different patents, with different claim
`terms, associated with different road milling machine technologies.” D.I. 106 at 5. Aside from
`the fact that they concern patents on road milling machines, the two parts of the case have zero
`substantive overlap. “This factor thus weighs in favor of certification under Rule 54(b).”
`Prolitec, 2024 WL 1213767, at *2–3 (entering partial final judgment after trial on Prolitec’s
`infringement claims where ScentAir’s infringement counterclaims remained pending because
`“[t]he two parts of th[e] case ha[d] little to do with one another”).
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`Moreover, the need for review of the Court’s judgment on Wirtgen’s claims will not be
`mooted by any developments in the proceedings related to Caterpillar’s counterclaims. Because
`the claims and counterclaims are unrelated, neither will substantively impact the other. So this
`factor, too, weighs in favor of entry of partial final judgment. See id. at *3.
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`Finally, the “miscellaneous factors” favor entry of judgment now too. “There is no just
`reason to delay an appeal by either party” from adverse portions of the jury verdict in the
`February trial, particularly since trial on Caterpillar’s counterclaims is not yet scheduled and will
`not take place until sometime next year at the earliest. Id. at *3.2
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`Wirtgen’s proposed partial final judgment is attached to this letter as Exhibit A. Wirtgen
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`shared this proposal with Caterpillar and solicited Caterpillar’s input on the form of the
`judgment. Caterpillar contends that submission of a form of judgment is “premature” because
`Caterpillar does not “agree” to entry of a partial final judgment. See Exhibit B. Given that
`Caterpillar has now decided to take no position on whether a partial final judgment is proper,
`however, Wirtgen believes that submission of a proposed judgment is appropriate.
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`2 It is possible that, if Caterpillar were awarded damages on its counterclaims, there could
`be a set-off against the damages already awarded to Wirtgen. But the possibility of set-offs “is
`present in many cases in which a Rule 54(b) judgment is entered, and for that reason cannot bar a
`court from directing the entry of final judgment as to fewer than all of the claims in the case.”
`Prolitec, 2024 WL 1213767, at *3 n.3; see Curtiss-Wright, 446 U.S. at 8 (holding that “[t]he
`mere presence” of counterclaims creating a potential set-off “does not render a Rule 54(b)
`certification inappropriate” because otherwise “Rule 54(b) would lose much of its utility”). And
`the speculative possibility of a set-off certainly should not affect the calculus here, where the
`other relevant factors weigh so strong in favor of immediate entry of partial final judgment.
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`Case 1:17-cv-00770-JDW Document 460 Filed 09/24/24 Page 4 of 4 PageID #: 40869
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`Young Conaway Stargatt & Taylor, LLP
`September 24, 2024
`Page 4
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`Caterpillar’s Position
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`Caterpillar takes no position on whether the Court should enter partial final judgment.
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`Respectfully,
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`/s/ Adam W. Poff
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`Adam W. Poff (No. 3990
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`cc: All Counsel of Record (vial E-mail)
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