AND NOW, this 5th day of February, 2024, upon consideration of Defendant Caterpillar, Inc.’s Motion to Exclude Certain Expert Testimony (D.I.

210), and for the reasons stated in the accompanying Memorandum, it is ORDERED that the Motion is GRANTED as to Dr. Pallavi Seth’s damages opinion.

To the extent that Wirtgen believes that there are parts of Dr. Seth’s opinion that she can still offer, then no later than February 6, 2023, at 3 p.m. EST, Wirtgen must disclose to Caterpillar which parts of Dr. Seth’s expert report it intends to offer at trial.

The Parties shall meet and confer and may raise any disputes at the final pretrial conference on February 8, 2024.

These disclosures reflect an unserious effort to narrow the evidence to be presented at trial.

In offering these designations and exhibits, the Parties would foist on my staff and me weeks of time to resolve objections for a huge volume of material that will never be introduced at trial.

On or before 5 p.m. EST on February 6, 2024, each Party shall disclose to the other a list of exhibits and deposition designations that it anticipates using at trial next week;

The Parties shall meet and confer in a good faith effort to narrow the objections to the materials that they will use;

By 10 p.m. EST on February 7, 2024, the Parties shall file on the docket revised versions of their exhibit list and proposed deposition designations, with objections for both categories; and

When Dr. Pallavi Seth constructed a hypothetical negotiation to calculate those damages, she placed a great deal of emphasis on Wirtgen’s reluctance to enter into a license agreement with its competitor.

Rule 702’s requirements establish “three distinct substantive restrictions on the admission of expert testimony: qualifications, reliability, and fit.” Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000); see also Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993).

Nonetheless, “given the great financial incentive parties have to exploit the inherent imprecision in patent valuation, courts must be proactive to ensure that the testimony presented—using whatever methodology—is sufficiently reliable to support a damages award.” Commonwealth Sci. & Indus.

In her reasonable royalty calculation, Dr. Seth was permitted to “consider the profits on sales [Wirtgen] might lose as a result of granting a license.” Asetek Danmark A/S, 852 F.3d at 1362 (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1554–55 (Fed. Cir. 1995) (en banc)).

To the extent that Wirtgen believes that there are parts of Dr. Seth’s opinion that survive this analysis, it may disclose the testimony that it proposes to Caterpillar in short order, and I will resolve any remaining disputes at the final pretrial conference.

Pursuant to District of Delaware Local Rule 83.5 and the attached certifications, counsel moves for the admission pro hac vice of Brooke N McLain, Esquire and Andrew Z. Barnett, Esquire of Sterne, Kessler, Goldstein & Fox P.L.L.C. to represent Plaintiff Wirtgen America, Inc. in the above-captioned action.

Dated: January 31, 2024 Of Counsel: Ryan D. Levy Seth R. Ogden William E. Sekyi Dominic A. Rota Mark A. Kilgore

IT IS HEREBY ORDERED that counsel’s Motion for Admission Pro Hac Vice of Brooke N. McLain, Esquire and Andrew Z. Barnett, Esquire is GRANTED.

Defendant Caterpillar Inc. respectfully requests an exemption from the United States District Court for the Eastern District of Pennsylvania’s June 3, 2019 Standing Order titled In re Procedures Regarding the Possession and Use of Cameras and Personal Electronic Devices by Visitors to the United States Courthouses and Other Federal Court Locations in the Eastern District of Pennsylvania so that the following individuals may bring their personal electronic devices to the February 1, 2024 hearing in this matter: Cassie Black (“Lead Counsel”) and Bill Smith (“Technical Operator”).

Lead Counsel, who has been admitted pro hac vice in this matter, is not in possession of her bar identification card.

Lead Counsel and Technical Operator will continue to be bound by Federal Rule of Criminal Procedure 53 and Local Civil Rule 83.2 prohibiting photographs or broadcasting.

James C. Yoon Ryan R. Smith Christopher D. Mays

District courts apply regional circuit law with respect to motions to seal in patent cases.

“In the Third Circuit, the right is particularly robust.” In re Application of Storag Etzel GmbH for an Ord., Pursuant to 28 U.S.C. § 1782, to Obtain Discovery for Use in a Foreign Proceeding, No. 19-cv-209, 2020 WL 2949742, at *7 (D. Del.

With respect to the non-public financial information and the CTCT documents, I have previously found that Caterpillar has met the Avandia standard.

Caterpillar incorporates by reference its brief in support of a prior motion to seal, but that brief doesn’t directly address the type of document at-issue.

Caterpillar shall refile Exhibit 7 with updated redactions limited to identifying customer information consistent with this Order.

Rule 702’s requirements establish “three distinct substantive restrictions on the admission of expert testimony: qualifications, reliability, and fit.” Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000).

Regarding the reliability requirement, Rule 702 mandates that the relevant expert testimony “must be supported by appropriate validation—i.e., ‘good grounds,’ based on what is known.” Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 590 (1993); see also Schneider ex rel.

That’s sufficient to satisfy Rule 26 which requires that his report provide “a complete statement of all opinions [he] will express and the basis and reasons for them.” FED. R. CIV.

Caterpillar’s mental state Both Dr. Meyer and Dr. Lumkes point to evidence of Caterpillar copying features of Wirtgen’s machines to bolster their respective conclusions that Wirtgen’s inventions were not obvious.

Meyer, Lumkes, and Rahn each offer opinions to invoke the doctrine of equivalents, suggesting that differences between Caterpillar’s machines and claims in Wirtgen’s patents are insubstantial.

Pursuant to District of Delaware Local Rule 83.5 and the attached certifications, counsel moves for the admission pro hac vice of Daniel S. Block, Esquire & William H. Milliken, Esquire of Sterne Kessler Goldstein & Fox PLLC to represent Plaintiff Wirtgen America, Inc. in the above-captioned action.

Dated: January 12, 2024

IT IS HEREBY ORDERED that counsel’s Motion for Admission Pro Hac Vice of Daniel S. Block, Esquire & William H. Milliken, Esquire is GRANTED.

Joshua D. Wolson United States District Judge

AND NOW, this 16th day of January, 2024, upon consideration of Plaintiff Wirtgen America, Inc.’s Motion to Exclude Inadmissible Expert Testimony (D.I.

217), and for the reasons stated in the accompanying Memorandum, it is ORDERED that Wirtgen’s Motion to Exclude Testimony (D.I.

217) is GRANTED.

It is FURTHER ORDERED that, upon consideration of Defendant Caterpillar, Inc.’s Motion to Exclude Certain Expert Testimony (D.I.

210), and for the reasons stated in the accompanying Memorandum, the Motion is GRANTED as to Dr. John Meyer’s opinion regarding the doctrine of equivalents and DENIED in all other respects.

AND NOW, this 5th day of January, 2024, upon consideration of Plaintiff Wirtgen America, Inc.’s Motion to Compel the Production of Documents Related to Previously Undisclosed Defense(s) (D.I.

271) and following a telephone conference with counsel for the Parties, it is ORDERED that the Motion is DENIED.

During his deposition, Mr. Engelmann testified that while Caterpillar relied on its lawyers to form its non- infringement belief, Mr. Engelmann’s own views of non-infringement were not based on the advice of counsel.

He only offered his personal views when pressed and in response to a question that instructed him to set aside advice of counsel and to share his own views.

Therefore, Caterpillar hasn’t put the advice of its counsel at issue.

Pursuant to Local Rule 83.5 and the attached certification, counsel moves the admission pro hac vice of Cassie Leigh Black of WILSON SONSINI GOODRICH & ROSATI, P.C., 1301 Avenue of the Americas, 40th Floor, New York, NY 10019 to represent Defendant Caterpillar Inc. in this matter.

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

January 5, 2024 Date: __________

AND NOW, this 5th day of January, 2024, upon consideration of Defendant Caterpillar, Inc.’s Motion To Strike Untimely New Opinions of Drs.

The expert disclosure provisions of Federal Rules of Civil Procedure 26 and 37 are designed “to prevent trial by ambush.” Ne.

Rule 26(a) requires that an expert report contain “a complete statement of all opinions the witness will express and the basis and reasons for them.” FED. R. CIV.

During that discussion, Dr. Meyer reiterated his position that the Wirtgen machines practice and are the commercial embodiment of the ‘641 Patent.

But just because Dr. Meyer elaborated on his prior opinion during his deposition, or explained the way that he relied on one of the documents disclosed in his report, isn’t a reason to exclude this testimony pursuant to Rule 37(c)(1).

AND NOW, this 4th day of January, 2024, it is ORDERED that the Parties shall appear on February 1, 2024, at 10:00 a.m. EST in Courtroom 12B, United States District Court, 601 Market Street, Philadelphia, PA 19106, for a hearing regarding that portion of Defendant Caterpillar, Inc.’s Motion To Exclude Certain Expert Testimony (D.I.

210) that relates to Dr. Pallavi Seth.

Pursuant to Fed. R. Civ.

P. 77(b), if any Party objects to such proceedings occurring outside the District of Delaware, it must object on or before January 12, 2024.

AND NOW, this 4th day of January, 2024, it is ORDERED that a telephone conference is scheduled for Friday, January 5, 2024 at 11:00 a.m. EST before the undersigned.

Counsel for the Parties are directed to use the Court’s dial-in number, which was provided by Chambers via email.

A judge may depart from a word’s ordinary and customary meaning only when a patentee (1) sets out a definition and acts as his own lexicographer, or (2) disavows the full scope of a claim term either in the specification or during prosecution.

The reissue procedure “allows a patentee to broaden the scope of an existing patent to include subject matter that had been erroneously excluded from that patent.” Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1321–22 (Fed. Cir. 2006) (citing 35 U.S.C. § 251)).

Caterpillar needs to point to prosecution history that would demonstrate to an objective observer that “the purpose of the patentee’s amendment or argument concerning a particular claim was ... to overcome prior art and secure the patent.” Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1267 (Fed. Cir. 2012) (citation omitted).

To hold otherwise would allow for a mammoth loophole: an IPR petitioner would always add a physical device that is identical to patents or printed publications in the subsequent civil case just to evade estoppel.

Dr. Rakow submitted a signed declaration stating that “[a]lthough the product literature included illustrations ... of the machines, my inspection allowed me to physically measure and confirm specific dimensions relevant to this claim.” (D.I.