Case 1:17-cv-00770-JDW Document 443 Filed 08/07/24 Page 1 of 5 PageID #: 40683
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`Case No. 1:17-cv-00770-JDW
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`ORDER
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`AND NOW, this 7th day of August, 2024, upon consideration of Caterpillar, Inc.’s
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`CATERPILLAR, INC.,
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`Defendant.
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`Motion For Leave To Amend The Scheduling Order (D.I. 426), I note as follows.
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`1.
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`Federal Rule of Civil Procedure 16(b)(4) allows for the modification of a
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`scheduling order “only for good cause and with the judge’s consent.” See Fed. R. Civ. P.
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`16(b)(4). “Whether or not the requirements of Rule 16(b) have been met is a procedural
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`issue not pertaining to the patent laws, and therefore regional circuit law applies to this
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`question.” Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1270 (Fed. Cir. 2002).
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`2.
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`Good cause exists when the imposed schedule “cannot reasonably be met
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`despite the diligence of the party seeking the extension.” See Fed. R. Civ P. 16(b)(4)
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`advisory committee’s note to the 1983 amendment; see also ICU Med., Inc. v. RyMed
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`Techs., Inc., 674 F. Supp. 2d 574, 577 (D. Del. 2009). Modifications under Rule 16(b)(4)
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`hinge on the moving party’s diligence, not the prejudice to the non-moving party. See
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`Case No. 1:17-cv-00770-JDW
`
`
`
`
`
`
`
`ORDER
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`AND NOW, this 7th day of August, 2024, upon consideration of Caterpillar, Inc.’s
`
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`CATERPILLAR, INC.,
`
`
`
`
`
`
`Defendant.
`
`Motion For Leave To Amend The Scheduling Order (D.I. 426), I note as follows.
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`1.
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`Federal Rule of Civil Procedure 16(b)(4) allows for the modification of a
`
`scheduling order “only for good cause and with the judge’s consent.” See Fed. R. Civ. P.
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`16(b)(4). “Whether or not the requirements of Rule 16(b) have been met is a procedural
`
`issue not pertaining to the patent laws, and therefore regional circuit law applies to this
`
`question.” Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1270 (Fed. Cir. 2002).
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`2.
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`Good cause exists when the imposed schedule “cannot reasonably be met
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`despite the diligence of the party seeking the extension.” See Fed. R. Civ P. 16(b)(4)
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`advisory committee’s note to the 1983 amendment; see also ICU Med., Inc. v. RyMed
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`Techs., Inc., 674 F. Supp. 2d 574, 577 (D. Del. 2009). Modifications under Rule 16(b)(4)
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`hinge on the moving party’s diligence, not the prejudice to the non-moving party. See
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`Case 1:17-cv-00770-JDW Document 443 Filed 08/07/24 Page 2 of 5 PageID #: 40684
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`Race Tires Am., Inc. v. Hoosier Racing Tire Corp., 614 F.3d 57, 84 (3d Cir. 2010); see also
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`Siemens Med. Sols. USA, Inc. v. Humedica, Inc., No. CV 14-880-LPS-CJB, 2015 WL 1738186,
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`at *1 (D. Del. Apr. 8, 2015) (collecting cases). A change in strategy does not amount to
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`good cause under Rule 16(b)(4). See Edgewell Pers. Care Brands, LLC v. Albaad Massuot
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`Yitzhak, Ltd., No. CV 15-1188-RGA-MPT, 2017 WL 2459645, at *2 (D. Del. June 7, 2017).
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`3.
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`Caterpillar hasn’t demonstrated good cause permitting amendment. It cites
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`three developments in the case following its original contentions: (a) my claim
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`construction order dated March 10, 2023; (b) the IPR proceedings, and (c) Wirtgen’s
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`requests for EPR. Yet Caterpillar fails to show me how any of these developments lead to
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`the new contentions it is mounting.
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`4.
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`As a general principle, claim construction could provide good cause for
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`amendment. See, e.g., ChriMar Sys. Inc. v. Cisco Sys. Inc., No. 13CV01300JSWMEJ, 2015
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`WL 13449849, at *4 (N.D. Cal. May 14, 2015), report and recommendation adopted, No. C
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`13-01300 JSW, 2015 WL 13450357 (N.D. Cal. June 8, 2015). But “differing claim
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`construction in and of itself does not constitute good cause[;] the moving party must still
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`establish its diligence.” Verinata Health, Inc. v. Sequenom, Inc., 2014 WL 789197, *2 (N.D.
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`Cal. Feb. 26, 2014) (citation omitted). “A party cannot argue that because its precise
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`proposal for a construction of a claim term is not adopted by the court, it is surprised and
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`must prepare new infringement contentions.” Nike, Inc. v. Adidas Am., Inc., 479 F.Supp.2d
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` 2
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`664, 667–68 (E.D. Tex. 2007).
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`Case 1:17-cv-00770-JDW Document 443 Filed 08/07/24 Page 3 of 5 PageID #: 40685
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`5.
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`Although Caterpillar is correct that that my construction of the phrase
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`“between projecting and retracted positions relative to said machine frame” differed from
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`either party’s proposed construction, it couldn’t have been that big a surprise to
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`Caterpillar: it tracks Caterpillar’s own explanation of the plain and ordinary meaning of
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`the term. I am therefore “left wondering how [my] construction … was so different” from
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`the parties’ proposals to justify Caterpillar’s request for amendment. GoDaddy.com LLC v.
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`RPost Commc'ns Ltd., No. CV-14-00126-PHX-JAT, 2016 WL 454445, at *3 (D. Ariz. Feb. 5,
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`2016), aff'd, 685 F. App'x 992 (Fed. Cir. 2017). Caterpillar should have, but did not, clarify
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`how my construction was materially or significantly different from either party’s proposal
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`to necessitate amendment. See id.
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`6.
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`Likewise, Caterpillar doesn’t explain why it could not have made these
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`contentions prior to the IPR proceedings and EPR requests. I accept Caterpillar’s
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`representation that it has been “diligently analyz[ing]” Wirtgen’s product lineup since the
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`stay was lifted. (D.I. 427 at 8.) But there’s no explanation as to why this “substantial
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`undertaking” wasn’t completed prior to the stay. (Id.)
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`7.
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`In its original contentions, Caterpillar chose to assert only a subset of claims
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`of the ‘995 Patent based on “limitations of what it could present at trial.” (D.I. 428 ¶ 10.)
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`Then the Patent Office invalidated some of Caterpillar’s asserted claims. So now Caterpillar
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`seeks to assert claims 49, 54, 57 of the ‘995 Patent. But Caterpillar could have asserted
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`those claims prior to the IPR. It chose not to do so based on trial strategy. These are the
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`Case 1:17-cv-00770-JDW Document 443 Filed 08/07/24 Page 4 of 5 PageID #: 40686
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`kinds of choices that a party must live with. See St. Clair Intell. Prop. Consultants, Inc. v.
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`Matsushita Elec. Indus. Co., No. CA 04-1436-LPS, 2012 WL 1015993, at *6 (D. Del. Mar. 26,
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`2012), aff'd, 522 F. App'x 915 (Fed. Cir. 2013).
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`8.
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`Caterpillar also relies on the fact that in its original infringement
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`contentions, it reserved its right to amend those contentions. But this does not excuse
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`Caterpillar from satisfying Rule 16’s good cause standard. See generally Simio, LLC v.
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`FlexSim Software Prod., Inc., 983 F.3d 1353, 1367 (Fed. Cir. 2020). It is the court, not the
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`parties, that holds the discretion to manage the schedule of litigation. See generally
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`Fed. R. Civ. P. 16.
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`9.
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`Finally, Caterpillar faults Wirtgen for amending its invalidity contentions
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`after the stay was lifted. But this is false equivalence. Wirtgen’s deadline to serve its
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`contentions had not yet passed at the time the stay was entered.
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`10.
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`For those reasons, Caterpillar hasn’t shown me that there’s a reason it could
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`not have made these contentions by the original deadline. The “good cause” standard is
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`not satisfied. See Fed. R. Civ. P. 16(b)(4).
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`11.
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`In ruling on this motion, I do not need to consider the Pennypack factors.
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`See Chervon (HK) Ltd. v. One World Techs., Inc., No. CV 19-1293-GBW, 2023 WL 2372938,
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`at *3 (D. Del. Mar. 6, 2023) (declining to apply the Pennypack factors when striking
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`belatedly filed invalidity contentions); see also Otsuka Pharm. Co. v. Aurobindo Pharma
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`Ltd., No. CV 14-3306 (JBS/KMW), 2017 WL 11463663, at *4 (D.N.J. Sept. 15, 2017)
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`Case 1:17-cv-00770-JDW Document 443 Filed 08/07/24 Page 5 of 5 PageID #: 40687
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`(explaining that Pennypack “has no place in the present analysis whether ‘good cause’ is
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`shown to enlarge a scheduling order deadline under Fed. R. Civ. P. 16(b)(4)”).
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`Therefore, it is ORDERED that the Motion To Amend The Scheduling Order (D.I.
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`426) is DENIED.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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