WHEREAS: (1) Plaintiff Wirtgen America, Inc. and Defendant Caterpillar Inc., (“the Parties”) have reached a mutually satisfactory resolution of all issues between them that were the subject of this action; and (2) the Parties have caused to be executed on October 8, 2024 a Settlement Agreement (“Agreement”) resolving those issues; subject to the terms and conditions of the Agreement, the Parties jointly request and stipulate to the entry of an Order providing that:

All claims and counterclaims asserted by and between the Parties are dismissed with prejudice; and

Each of the Parties shall bear its own costs and attorneys’ fees.

Dated: October 9, 2024 11818987 / 11898.00005 SO ORDEREDthis 9th day of October , 2024.

WHEREAS Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Plaintiff” or “Wirtgen America”), and Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Defendant” or “Caterpillar”) have reached an agreement to settle the above-captioned action (“Action”); WHEREAS, the Parties have agreed to the terms of a binding settlement agreement and are presently working on preparing all necessary papers required by the agreement, including appropriate papers to dismiss this Action; and WHEREAS, entry of the Court’s Order of a Permanent Injunction and the Court’s decision on the entry of a Partial Judgment pursuant to Fed. R. Civ.

P. 54(b) are pending; WHEREAS, deadlines remain pending relating to Caterpillar’s counterclaims for patent infringement against Wirtgen America; WHEREAS, the Parties respectfully request the Court stay entry of any Permanent Injunction, Final Judgment, and further case deadlines while the Parties prepare appropriate papers for dismissal of all claims in this Action; NOW THEREFORE, IT IS HEREBY STIPULATED AND AGREED by the undersigned counsel for Plaintiff and Defendant, subject to the approval of the Court, that:

(1)—All judgments, orders, rulings, and case deadlines shall be stayed for 14 days while the Parties prepare appropriate papers for dismissalofall claims in this Action; and

Atthe conclusion of 14 days, the parties shall file a Stipulation of Dismissalor shall file a brief update with the Court addressing whetherthe stay of this Action should be continued.

SO ORDEREDthis Ist day of_October , 2024.

One district judge explained this seemingly-obvious point: “‘automatic’ operation does not preclude any user involvement, such as in physically connecting devices or providing electrical power.” Papst Licensing GmbH & Co. KG v. Apple Inc., No. 6:15-CV-01095, 2017 WL 897172, at *18 (E.D.

In reviewing a JMOL on obviousness, I “presume the jury resolved underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if supported by substantial evidence.” Apple Inc. v. Samsung Elecs.

Invalidity With obviousness, I “presume the jury resolved underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if supported by substantial evidence.” Apple Inc., 839 F.3d at 1047.

Third, Caterpillar argues it could not have copied Wirtgen because certain technologies (parallel to surface feature, reverse rotor shut off, and hot swap) were present in its earlier generation of cold planers.

“Head-to-head competition and lost market share tend to evidence irreparable harm.” Id. Caterpillar and Wirtgen are “direct competitors in a limited market.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1337 (Fed. Cir. 2013); see also Peach State Labs, Inc. v. Env't Mfg.

Wirtgen America, Inc’s Motion For Judgment As A Matter Of Law Pursuant To Federal Rule Of Civil Procedure 50(b), Or, In the Alternative, A New Trial Pursuant To Federal Rule of Civil Procedure 59 (D.I.

To the extent that the Parties do not agree, neither side may submit more than five pages of double-spaced argument in favor of its proposal, and I will not accept additional, responsive briefs.

On or before October 11, 2024, Caterpillar shall provide to Wirtgen an accounting of Caterpillar’s sales of infringing products through September 30, 2024.

On or before October 18, 2024, Wirtgen shall file a calculation of its updated damages based on the information that it receives from Caterpillar.

It is FURTHER ORDERED that the Parties should confer on whether I should enter a partial judgment in this case pursuant to Fed. R. Civ.

SO ORDEREDthis 4th dayof September , 2024.

Pursuant to Local Rule 83.5 and the attached certifications, counsel moves for the admission pro hac vice of Daniel C. Cooley of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, 1875 Explorer Street, Suite 800, Reston, VA 20190 and James R. Barney, David Mroz, and Jason Romrell of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, 901 New York Avenue, NW, Washington, DC 20001 to represent Defendant Caterpillar Inc. in this matter.

Dated: August 28, 2024 11713605 / 11898.00005

IT IS HEREBY ORDERED counsel’s motion for admission pro hac vice is granted.

United States District Judge

Abstract ideas “are products of the mind, mental steps, not capable of being controlled by others, regardless what a statute or patent claim might say.” Berkheimer, 890 F.3d at 1375 (Lourie, J., concurring in denial of rehearing en banc) (citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 (1972)).

Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (collecting cases); see, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019) (patent claiming “a physical machine that is quite tangible—an electric vehicle charging station” was directed at an abstract idea).

The question then becomes whether that focus is “’a specific means or method that improves the relevant technology or [is] instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.’” 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)).

The claimed controller, with its ability to manipulate the road milling machine itself, separates the ‘538 Patent from cases where data processing fails Alice Step 1.

It’s possible that the “implementation details” Wirtgen seeks are “within the routine knowledge of one of ordinary skill in the art, and ‘a patent need not teach, and 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., 802 F.2d 1367, 1384 (Fed. Cir. 1986)).

AND NOW, this 21st day of August, 2024, upon consideration of Defendant Caterpillar, Inc.’s Motion Regarding Estoppel Defenses (D.I.

364), it is ORDERED as follows:

The Motion is DENIED to the extent that Caterpillar asserts equitable defenses pertaining to the U.S. Patent No. 7,828,309, U.S. Patent No. 9,656,530, and U.S. Patent No. 7,946,788; and

The Motion is DENIED WITHOUT PREJUDICE to the extent that Caterpillar asks me to find that U.S. Patent No. RE48,268 Patent is unenforceable.