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`EXHIBIT A
`EXHIBIT A
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`Case 3:23-mc-00003 Document 8-1 Filed 02/10/23 Page 1 of 11 PageID #: 164
`Case 3:23-mc-00003 Document 8-1 Filed 02/10/23 Page 1 of 11 PagelD #: 164
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`

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`Case 1:17-cv-00770-RGA-MPT Document 62 Filed 11/18/21 Page 1 of 64 PageID #: 9797
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-RGA-MPT
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendants.
`
`DEFENDANT CATERPILLAR INC.’S FIRST AMENDED ANSWER TO
`AMENDED COMPLAINT AND COUNTERCLAIMS
`
`Defendant Caterpillar Inc. (“Caterpillar”) hereby responds to the Amended Complaint for
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`patent infringement (D.I. 33) of Plaintiff Wirtgen America, Inc. (“Wirtgen America”) as follows.
`
`To the extent not specifically admitted in the following paragraphs, the allegations in Wirtgen
`
`America’s Amended Complaint are denied.
`
`THE PARTIES1
`
`1.
`
`Caterpillar lacks sufficient knowledge and information to admit or deny the
`
`allegations of paragraph 1 and therefore denies them.
`
`2.
`
`Caterpillar admits that it is a Delaware corporation with its principal place of
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`business at 510 Lake Cook Road, Suite 100, Deerfield, Illinois 60015.
`
`3.
`
`Caterpillar admits that it is the parent company of Caterpillar Prodotti Stradali S.r.l.
`
`and Caterpillar Paving Products Inc.
`
`1 Caterpillar has incorporated the headings that appear in the Amended Complaint.
`Caterpillar does not necessarily agree with the characterization of such headings and does not
`waive any right to object to those characterizations. Accordingly, to the extent that a particular
`heading can be construed as an allegation, Caterpillar specifically denies any such allegations.
`
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`not yet determined. Wirtgen America’s infringement of one or more claims of the ’618 patent will
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`continue to damage Caterpillar, causing irreparable harm for which there is no adequate remedy
`
`at law, unless enjoined by this Court.
`
`COUNTERCLAIM 4
`(Prosecution Laches)
`
`36.
`
`Caterpillar hereby re-alleges and incorporates by reference the allegations in
`
`paragraphs 1-35 of these Counterclaims as if fully set forth herein.
`
`37. Wirtgen America is barred by the doctrine of prosecution history laches from
`
`enforcing at least the ’871, ’530, ’474, ’268, ’390 and ’391 patents against Caterpillar by its
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`unreasonable and unexplained delay in their prosecution which has caused economic and
`
`evidentiary prejudice to Caterpillar and third parties (such as corporate affiliates, dealers, and end-
`
`users). For example, as explained in the following paragraphs, Caterpillar, and in some cases third
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`parties, developed and/or sold accused road milling machines before issuance of the above-
`
`identified patents. To the extent that Wirtgen America proves infringement of any of the above-
`
`identified patents, Caterpillar could have implemented non-infringing alternatives and/or
`
`substitute products had the patented claims been prosecuted in a timely manner.
`
`The ’871 and ’530 Patents
`
`38.
`
`The ’871 patent stems from a pair of foreign priority documents filed on September
`
`12, 2005. On February 14, 2012, the U.S. Patent and Trademark Office granted the ’592 patent
`
`which is the parent of the ’871 patent. On January 12, 2012, the application which resulted in the
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`’871 patent was filed. The claims in the application were substantially similar to those of the ’592
`
`patent. But a material distinction existed in that the claim resulting in the ’871 patent omitted the
`
`“controller” element of the ’592 patent. The ’871 patent therefore claimed the same embodiment
`
`as the ’592 patent, but with substantially broader claim language. It is Wirtgen America’s burden
`
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`to prove infringement of the “controller” element, and it has thus far failed to identify any
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`“controller” used to perform the claimed functionality of the ’592 patent.
`
`39.
`
`On information and belief, based on the totality of the circumstances, the delay
`
`between the original priority document, filed September 12, 2005, and issuance of the ’871 patent
`
`over 9 years after the priority filing was unreasonable and unexplained.
`
`40.
`
`Caterpillar has been prejudiced by the unreasonable and unexplained delay. For
`
`example, between the date of the original priority document and issuance of the ’871 patent,
`
`Caterpillar invested both person hours and costs in the development of road milling machines.
`
`Development of such products was substantially far along when the ’871 patent issued on April
`
`21, 2015.
`
`41.
`
`The ’530 patent is a continuation of the ’871 patent. The claims of the ’530 patent
`
`are similar to those of the ’871 patent, but in at least some respects broader still. For example, the
`
`claims of the ’530 patent omitted the previously claimed “lifting position sensor” in its entirety.
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`The ’530 patent also lacked the “controller” element of the ’592 patent. The ’530 patent therefore
`
`claimed the same embodiment as the ’592 and ’871 patents, but with substantially broader claim
`
`language in at least some respects. It is Wirtgen America’s burden to prove infringement of the
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`“controller” and “lifting position sensor” elements, and it has thus far failed to identify any such
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`elements used to perform the claimed functionality of the ’530 patent.
`
`42.
`
`On information and belief, based on the totality of the circumstances, the delay
`
`between the original priority document, filed September 12, 2005, and issuance of the ’530 patent
`
`over 11 years after the priority filing was unreasonable and unexplained.
`
`43.
`
`Caterpillar has been prejudiced by the unreasonable and unexplained delay. For
`
`example, between the date of the original priority document and issuance of the ’530 patent,
`
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`Caterpillar and third parties (such as corporate affiliates, dealers, and end-users) invested in,
`
`worked, or used the allegedly infringing machines. Indeed, Wirtgen America alleges that
`
`Caterpillar began importing certain infringing road milling machines in 2016 or 2017, which is
`
`before the ’530 patent issued in May 2017. At minimum, Caterpillar was developing such
`
`machines prior to the ’530 patent’s issuance.
`
`The ’474 Patent
`
`44.
`
`The ’474 patent stems from a foreign priority document filed on April 27, 2006.
`
`On April 10, 2013, the USPTO granted the ’932 patent which is the parent of the ’474 patent. On
`
`July 3, 2013, the application which resulted in the ’474 patent was filed. The claims were
`
`substantially similar to those of the ’932 patent. But a material distinction existed in that the claims
`
`for the application resulting in the ’474 patent changes the requirement of having a single
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`“operational parameter” to allow for potentially multiple “operating parameters.” The ’474 patent
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`therefore claimed the same embodiment as the ’592 patent but with broader claim language in
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`some respects. It is Wirtgen America’s burden to prove infringement of a single “operating
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`parameter” element, and it has thus far failed to prove that aspect.
`
`45.
`
`On information and belief, based on the totality of circumstances, the delay between
`
`the original priority document, filed April 27, 2006, and issuance of the ’474 patent nearly 8 years
`
`after the priority filing was unreasonable and unexplained.
`
`46.
`
`Caterpillar has been prejudiced by the unreasonable and unexplained delay. For
`
`example, between the date of the original priority document and issuance of the ’474 patent,
`
`Caterpillar invested person hours and costs in the development of the accused road milling
`
`machine machines. Indeed, the development of these machines was substantially far along when
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`the ’474 patent issued on April 8, 2014.
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`The ’268 Patent
`
`47.
`
`The ’268 patent is a reissue of U.S. Patent Application No. 12/985,400, which was
`
`filed on January 6, 2011, and issued as U.S. Patent No. 8,408,659 (the “’659 patent”) on April 2,
`
`2013.
`
`48.
`
`The reissue application for the ’268 patent was filed on March 23, 2018, five years
`
`after the issuance of the ’659 patent and almost thirteen years after the earliest filed application to
`
`which it claims priority, which was filed on April 15, 2005.
`
`49.
`
`In connection with filing for a reissue application for the ’268 patent, Gunter Hahn
`
`of Wirtgen GmbH declared that the ’659 patent was “inoperative or invalid … [b]y reason of the
`
`patentee claiming more than he had the right to claim in the patent.” Mr. Hahn provided no
`
`explanation for why the ’659 patent’s claims were drafted in an overly broad and invalid manner
`
`or why it had taken approximately five years to identify this error. He also failed to explain what
`
`efforts, if any, Wirtgen GmbH undertook to identify prior art before filing the ’659 patent. On
`
`information and belief, had Wirtgen GmbH performed a reasonable prior art search and/or
`
`disclosed known prior art, the ’659 patent would not have issued with overly broad claims.
`
`50. Wirtgen GmbH, Mr. Hahn and others involved in the prosecution of the reissue
`
`application for the ’268 patent abused the reissue process by including an unreasonable number of
`
`claim amendments, which effectively buried the improper broadening claim amendments. For
`
`example, the original version of claim 1 recited “a traction drive component for driving the
`
`working drum,” whereas the reissued version of claim 1 recited a “traction drive for driving the
`
`working drum ….” The term “component” is a nonce term and would have subjected the original
`
`version of claim 1 to treatment under 35 U.S.C. § 112(f) as a “means-plus-function” claim with
`
`respect to the “traction drive” limitation. By omitting the term “component,” claim 1 was
`
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`effectively broadened to remove the limitations imposed by means-plus-function claiming. Worse
`
`still, the specification was amended to include new text which was not present in the earlier ’659
`
`patent. These amendments to the specification effectively broadened the scope of at least claim 1
`
`with respect to other claim terms subject to means-plus-function claiming.
`
`51.
`
`On information and belief, based on the totality of the circumstances, the delay
`
`between the original priority document, filed April 15, 2005, and issuance of the ’659 patent over
`
`15 year after the priority filing was unreasonable and unexplained.
`
`52.
`
`Caterpillar has been prejudiced by the unreasonable and unexplained delay. For
`
`example, between the date of the original priority document and issuance of the ’268 patent,
`
`Caterpillar and third parties (such as corporate affiliates, dealers, and end-users) invested in,
`
`worked, or used the allegedly infringing machines. Indeed, Wirtgen America alleges that
`
`Caterpillar began importing certain road milling machines in 2016 or 2017, which is prior to the
`
`reissue application filing and several years before the ’268 patent issued.
`
`The ’390 and ’391 Patents
`
`53.
`
`The ’390 and ’391 patents stem from a foreign priority document filed on December
`
`22, 2006.
`
`54.
`
`The application resulting in the ’390 patent was filed on December 12, 2016, as a
`
`continuation to an application which issued as U.S. Patent No. 9,523,176 (“the ’176 patent”). On
`
`June 20, 2017, Wirtgen GmbH filed a preliminary amendment canceling the pending application
`
`claims and then submitted an entirely new set of applications claims. On information and belief,
`
`this new set of claims was submitted shortly after attorneys representing Wirtgen entities or others
`
`involved in patent prosecution inspected Caterpillar’s accused road milling machines.
`
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`55.
`
`The claims for the application resulting in the ’390 patent materially differed from
`
`the ’176 patent by omitting the “controller” element. The ’390 patent therefore claimed the same
`
`embodiment as the ’176 patent, but with, in at least some respects, broader claim language.
`
`Wirtgen America has presented no evidence that Caterpillar practiced the “controller” limitation
`
`of the ’176 patent.
`
`56.
`
`The application resulting in the ’391 patent was filed on June 16, 2017, as a
`
`continuation to an application which is itself a continuation of the application which issued as the
`
`’176 patent. The application for the ’391 patent was, in fact, filed the same day that Wirtgen
`
`America filed the Original Complaint in this action. On information and belief, this new set of
`
`claims was submitted shortly after attorneys representing Wirtgen entities or others involved in
`
`patent prosecution inspected Caterpillar’s accused road milling machines.
`
`57.
`
`A primary distinction existed in that the claims for the application resulting in the
`
`’391 patent omitted the “controller” element of the ’176 patent. The ’391 patent therefore claimed
`
`the same embodiment as the ’176 patent, but with, in at least some respects, broader claim
`
`language. Wirtgen America has presented no evidence that Caterpillar practiced the “controller”
`
`limitation of the ’176 patent.
`
`58.
`
`On information and belief, based on the totality of circumstances, the delay between
`
`the original priority document, filed December 22, 2006, and issuance of the ’390 and ’391 patents
`
`over 11 years after the priority filing was unreasonable and unexplained.
`
`59.
`
`Caterpillar has been prejudiced by the unreasonable and unexplained delay. For
`
`example, between the date of the original priority document and issuance of the ’390 and ’391
`
`patents, Caterpillar and third parties (such as corporate affiliates, dealers, and end-users) invested
`
`in, worked, or used the allegedly infringing machines. Indeed, Wirtgen America alleges that
`
`60
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`Case 1:17-cv-00770-RGA-MPT Document 62 Filed 11/18/21 Page 61 of 64 PageID #: 9857
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`Caterpillar began importing certain road milling machines in 2016 or 2017, which is before the
`
`’390 and ’391 patents issued.
`
`Wirtgen’s “New” Prosecution Strategy
`
`60. Martin Lenz, of Wirtgen GmbH, publicly boasted that “[w]ith the help of Wayne
`
`Beavers [Wirtgen’s primary prosecution counsel] we adopted a completely new IP strategy for the
`
`U.S.” (emphasis added). Mr. Lenz went on to explain that his patent counsel’s “commercial
`
`awareness is perfectly distinctive….” On information and belief, Mr. Beavers crafted “new”
`
`patent claims from old patent applications with pending continuations, including those patents
`
`discussed in the preceding paragraphs. As a result of Wirtgen GmbH’s IP strategy, the scope of
`
`its patent coverage was purportedly “new,” making it difficult and more costly for Caterpillar and
`
`other third parties to design products and otherwise react appropriately.
`
`61.
`
`Upon information and belief, the unreasonable delay in prosecuting the ’871, ’530,
`
`’474, ’268, ’390 and ’391 patents began at least when the original foreign priority documents
`
`and/or applications for the patents were filed and demonstrates a systematic strategy of delayed
`
`patent prosecution. On information and belief, Wirtgen America and/or its related entity Wirtgen
`
`GmbH engaged in a systematic strategy to delay prosecution of its patent applications and related
`
`continuation applications to gain an advantage over competitors such as Caterpillar and eliminate
`
`the possibility of any intervening rights enjoyed by those competitors. For example, on
`
`information and belief, Wirtgen America and/or Wirtgen GmbH intentionally prolonged the
`
`prosecution of patent applications and continuation applications to allow time for analyzing its
`
`competitors’ products and then drafting new patent claims to cover such products, while at the
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`same time preserving an earlier priority date to avoid competing products becoming prior art to
`
`the new claims.
`
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`Case 1:17-cv-00770-RGA-MPT Document 62 Filed 11/18/21 Page 62 of 64 PageID #: 9858
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`62.
`
`On information and belief, Wirtgen GmbH, Wirtgen America, and its legal counsel
`
`have attempted to conceal their patent prosecution misconduct. On information and belief,
`
`Wirtgen GmbH transferred its patents to Wirtgen America to shield the alleged inventors and
`
`others involved in patent prosecution from being subject to discovery or having to appear in this
`
`Court. Wirtgen America, in fact, did not name any Wirtgen GmbH employees (including the
`
`alleged inventors) on Wirtgen America’s initial disclosures—despite naming Caterpillar’s
`
`inventors as potential witnesses. On information and belief, Wirtgen America did so because it
`
`knew that these individuals may provide compromising testimony regarding Wirtgen’s IP strategy.
`
`63.
`
`An actual and justiciable controversy has thus arisen between Wirtgen America and
`
`Caterpillar concerning the enforceability of the ’871, ’530, ’474, ’268, ’390 and ’391 patents.
`
`64.
`
`Pursuant to 28 U.S.C. § 2201 et seq., Caterpillar is entitled to a judgment that at
`
`least the ’871, ’530, ’474, ’268, ’390 and ’391 patents are unenforceable for prosecution laches.
`
`DEMAND FOR A JURY TRIAL
`
`Caterpillar demands a jury trial on all issues so triable.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Caterpillar prays that the Court enter judgment in its favor and against
`
`Wirtgen America as follows:
`
`A.
`
`B.
`
`C.
`
`Dismissal, with prejudice, of Wirtgen America’s claims against Caterpillar;
`
`Denial of all relief that Wirtgen America seeks in its Amended Complaint;
`
`Judgment that Wirtgen America has infringed one or more claims of each of
`
`Caterpillar’s Asserted Patents;
`
`D.
`
`Judgment that Wirtgen America has induced others to infringe one or more claims
`
`of each of Caterpillar’s Asserted Patents;
`
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`Case 1:17-cv-00770-RGA-MPT Document 62 Filed 11/18/21 Page 64 of 64 PageID #: 9860
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Dated: November 18, 2021
`7496906/44413
`
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