Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 1 of 67 PageID #: 40745
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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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`CATERPILLAR, INC.,
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`Defendant.
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`Case No. 1:17-cv-00770-JDW
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`MEMORANDUM
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`Our legal system asks juries to answer complicated, important questions across a
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`range of subjects. That process only works if we give juries space to do their jobs, both
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`during trial and after. That means deferring to a jury’s findings as long as some evidence
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`supports the decision. In this case, Wirtgen America, Inc. and Caterpillar, Inc. put to a jury
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`a number of complicated questions concerning Wirtgen’s patent infringement claims. The
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`jury listened attentively for more than a week, deliberated, and returned a mixed verdict.
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`Rather than accept what the jury did, both Wirtgen and Caterpillar argue that the jury got
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`it wrong when it ruled against them. Miraculously, both also claim the jury got it right
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`when it ruled in their favor. But their arguments reflect each company drinking its own
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`Kool-Aid, rather than examining the jury’s verdict with appropriate deference. In my view,
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`the jury reached defensible conclusions on every issue presented to it. I will therefore
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`decline the Parties’ invitation to disturb the jury’s verdict.
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 2 of 67 PageID #: 40746
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`Beyond the jury verdict, Wirtgen seeks additional relief. Because Caterpillar
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`deliberately copied Wirtgen’s machines and continued its infringement long after it
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`should have stopped, I will award Wirtgen enhanced damages. Further, I find that Wirtgen
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`suffered an irreparable harm from Caterpillar’s infringement that monetary damages
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`would not compensate so I will grant Wirtgen’s request for a permanent injunction.
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`Caterpillar will also pay interest and supplemental damages.
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`I.
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`RELEVANT BACKGROUND
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`A.
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`The Parties
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`Wirtgen Group is a group of companies that manufacture and sell road
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`construction equipment. In May 2017, Wirtgen GmbH (the Wirtgen Group’s
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`manufacturing arm) assigned the at-issue patents to Wirtgen America1 for a nominal
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`amount. In December 2017, John Deere acquired Wirtgen Group for $5.2 billion. (Tr.
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`196:15-19.2) Caterpillar and Wirtgen compete in the road milling machine market. A
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`milling machine (or “cold planer”) removes the surface of a road for repaving.
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`B.
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`Patents At Issue
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`On June 16, 2017, Wirtgen sued Caterpillar for patent infringement. Wirtgen
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`accused Caterpillar’s large milling machines (the PM600 and PM800 series), small milling
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`1 I will refer to Wirtgen America as “Wirtgen.” To the extent I need to reference other
`Wirtgen entities, I will do so with specificity.
`2 References to “Tr.” refer to the trial transcript, and references to “Ex.” refer to exhibits
`that I admitted at trial.
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`2
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 3 of 67 PageID #: 40747
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`machines (the PM300 series), and reclaimers (the RM600 and RM800 machines) of
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`infringement.3 By the time the case reached trial, Wirtgen alleged that Caterpillar’s
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`Accused Machines infringed six of its patents, all disclosing various features or methods
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`relating to road construction machines.4 Wirtgen has never licensed the patents at-issue
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`in this case, and Caterpillar never contacted Wirtgen to ask for a license.
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`Relevant here, the ‘641 Patent discloses a method for safely driving backwards,
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`such that the machine’s rotor automatically shuts off if it’s too close to the ground. The
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`‘788 Patent discloses swapping between sensors that read the position of the machine
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`relative to the ground surface. The ‘972 Patent discloses a parallel-to-surface technology
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`that automatically levels the machine parallel to the ground. The ‘309 Patent discloses a
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`machine with a four-sided stability patten and a floating axel. The ‘530 Patent discloses
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`intelligent leg sensors for a road construction machine. The ’268 Patent discloses
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`isolation mounting to reduce vibrations from the engine.
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`C.
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`The Relevant Market
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`The road milling machine market consists of four companies: Wirtgen; Caterpillar;
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`BOMA; and Roadtec. Wirtgen dominates with roughly 70% market share. Caterpillar
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`trails in second and neither BOMAG nor Roadtec presents significant competition to
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`3 I refer to the PM 600 series, PM800 series, PM300 series, RM600, and RM800 as the
`“Accused Machines.”
`4 (1) U.S. Patent No. 7,828,309 (‘309 Patent); (2) U.S. Patent No. 7,530,641 (‘641 Patent);
`(3) U.S. Patent No. 9,656,530 (‘530 Patent); (4) U.S. Patent No. 7,946,788 (‘788 Patent); (5)
`U.S. Patent No. 8,424,972 (‘972 Patent); (6) U.S. Patent No. RE48,268 (‘268 Patent).
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`3
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`Wirtgen. Some consumers like to purchase their machines in fleets. At least at one point
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`in time, Caterpillar sought to position itself to provide a full range of products for its
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`customers. (See, e.g., Exs. 360.0016; 562.0010.)
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`One substantial source of revenue for road milling machine companies is spare
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`and replacement parts. Wirtgen’s customers buy these parts in an almost equal to what
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`they first paid to acquire the machine. (Tr. 200:19-24; Ex. 2687A.) Caterpillar expects to
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`get 30% of the initial machine price in revenue from sales of spare and replacement
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`parts every year for the life of the machine. (Tr. 892:21-893:9; 894:4-24.)
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`D.
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`Caterpillar’s Infringement
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`1.
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`Development
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`A new generation of milling machines launches about every decade. In 2010,
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`Caterpillar began its development of what would eventually become its PM300, PM600,
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`and PM800 series. That year, to aid that development process, Caterpillar tore down a
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`Wirtgen W120 machine. The teardown involved disassembling the machine and testing
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`its functionality and performance. Caterpillar photographed and created computer-
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`aided design files (“CAD files”) of the Wirtgen machine. From its teardown of its own
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`machine and the W120, Caterpillar generated 1,128 ideas for its next product,
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`identifying certain “advanced technologies.” During its development of the Accused
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`Machines, Caterpillar never tore down a Roadtec or BOMAG machine.
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`4
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`Caterpillar also surveyed its customers. (Id. 411:14-24 (discussing the “Voice of
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`Customer” research).) Through that research, Caterpillar identified what features
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`customers wanted in their cold planers. The surveys indicated that customers liked the
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`features on Wirtgen’s machines and, according to one expert at trial, “in some instances
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`[the customers] didn’t want a machine without that feature.” (Id. 897:13-18.)
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`From the teardown and its customer surveys, Caterpillar identified certain
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`technologies that would allow it to catch up to Wirtgen. This included parallel-to-surface
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`automatic leveling technology, a four-fold floating axel, and an isolation mounted
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`engine. Caterpillar also identified features that would “match in value” compared to the
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`W210. (Tr. 428:25-431:1; Ex. 0611.0039.) This included “position sensing cylinders” and
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`“automatic four leg leveling.” Then Caterpillar “look[ed] into ways of accomplishing
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`[those] feature[s]” during its development process. (Tr. 422:2-24.)
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`By 2012, Caterpillar’s development on the new machines stalled. In the interim,
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`the ‘641, ‘788, ‘972 and ‘309 Patents issued. In 2013, the development resumed. In
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`October 2014, Caterpillar engineers reconvened for an internal review to define the
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`concepts for its next machine.
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`2.
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`Launch
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`In 2016, Wirtgen held about a 50-60% market share and Caterpillar had roughly
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`4%. At that time, Caterpillar was “limp[ing] along” in the market with its PM200 series,
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`struggling to make sales. (Id. 360:13-362:20; 1025:4-14.) That year, Caterpillar released
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`5
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`its PM600 series, and Caterpillar’s market share quickly doubled. Wirtgen’s market share
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`declined by a corresponding amount. Wirtgen attributes this loss to Caterpillar’s
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`encroachment based on monthly reports from an association of equipment
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`manufacturers, but Caterpillar argues via expert testimony that it took market share
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`from Roadtec and BOMAG, not Wirtgen.
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`From Wirtgen’s perspective, Caterpillar’s sharp increase in market share was
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`unprecedented. It presented a “very serious” threat to Wirtgen’s business. (Id. 242:3-10.)
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`Nevertheless, Wirtgen ultimately regained this market share. From 2016 to 2024,
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`Wirtgen’s market share increased to just over 70% of the market.
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`E.
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`Litigation
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`1.
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`ITC proceeding
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`On July 19, 2017, Wirtgen filed a complaint with the International Trade
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`Commission, claiming infringement of five of the twelve patents in Wirtgen’s initial
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`complaint in this case. Wirtgen did not present the ‘788 and ‘972 Patents to the ITC.
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`Wirtgen America’s President and CEO (Jim McEvoy) testified that Wirtgen sought relief
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`from the ITC because of its ability to enjoin Caterpillar from importing infringing
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`machines into the country.
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`In October 2018, an ALJ at the ITC issued the ITC’s determination. He found that
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`Caterpillar’s machines violated 19 U.S.C § 1337 by importing products that infringed the
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`‘530 and ‘309 Patents. See Caterpillar Prodotti Stradali S.R.L. v. Int'l Trade Comm'n, 847
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`6
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`Fed. App'x 893, 894 (Fed. Cir. 2021). The ALJ found no violation of § 1337 with respect to
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`the ‘641 Patent, but he also said that, if customers in the United States used Caterpillar’s
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`machines, then they would infringe the ‘641 Patent (Tr. 441:13-17).
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`After the ITC’s decision, Caterpillar domesticated its production. This decision
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`allowed Caterpillar to comply with the ITC’s importation prohibition while continuing to
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`sell and manufacture the machines that the ITC determined infringed Wirtgen’s patents.
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`Caterpillar and Wirtgen appealed the ITC’s decision. On March 15, 2021, the
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`Federal Circuit affirmed the ALJ’s findings for the ‘530 and ‘309 Patents. See Caterpillar
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`Prodotti Stradali S.R.L., 847 Fed. App'x at 895. It reversed, vacated, and remanded as to
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`the ‘641 Patent. See id. On November 4, 2021, on remand, the ITC issued a modified
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`exclusion order to include the ‘641 Patent.
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`Caterpillar continued to sell machines with features that the ITC found to infringe
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`until it updated those machines. For example, in 2023, Caterpillar released rotary mixers
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`incorporating the same technology that infringes the ‘530 Patent. Caterpillar also
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`implemented certain redesigns to avoid infringing Wirtgen’s patents. In July 2020,
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`Caterpillar removed ride control from its machines. In 2021, Caterpillar removed its
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`reverse rotor shut off.
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`7
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`2.
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`This case
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`Wirtgen filed this lawsuit on June 16, 2017.5 On August 29, 2017, Judge Andrews
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`stayed the case pending the resolution of the parallel ITC proceedings. On May 27, 2021,
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`Judge Andrews lifted the stay with respect to all the patents in suit except the ‘641 Patent.
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`Judge Andrews lifted the stay on the ‘641 Patent on January 20, 2022. Before trial, I ruled on
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`the Parties’ Daubert motions, motions for summary judgment and motions in limine. All
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`told, Wirtgen prevailed on some issues, Caterpillar on others.
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`The Parties filed pre-trial motions to preclude ITC-related evidence. I denied
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`Caterpillar’s motion to the extent that it sought to prevent the jurors from learning that
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`a specific piece of evidence came from the ITC proceedings. I explained that the ITC
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`proceedings might be relevant to the patents at-issue before the jury and stripping the
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`evidence of this context would be confusing. I excluded Caterpillar’s proffered expert,
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`Paul Bartkowski, who Caterpillar offered to opine on the ITC proceeding.
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`Wirtgen submitted Dr. Pallavi Seth as its damages expert. She estimated a
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`reasonable royalty that Caterpillar would have paid to Wirtgen if Wirtgen and Caterpillar
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`had engaged in a hypothetical negotiation on the eve of the first alleged infringement.
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`Caterpillar filed a motion to exclude Dr. Seth’s testimony. After a hearing with counsel for
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`the Parties, I ruled that Dr. Seth’s reasonable royalty analysis was deficient. I concluded that
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`5 Caterpillar asserted counterclaims against Wirtgen for patent infringement. Discovery on
`Caterpillar’s counterclaims is ongoing.
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`8
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`Dr. Seth didn’t properly apportion her reasonable royalty, even though the law required her
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`to do so. I left open the possibility for Dr. Seth to offer an opinion that did not run afoul of
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`my ruling.
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`Wirtgen then served a supplemental damages report. Caterpillar moved to exclude
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`that report based on its timing and as to the substance of Dr. Seth’s methodology. As to the
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`former, Dr. Seth’s supplemental report qualified as an untimely disclosure, so I analyzed
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`whether to exclude the report after analyzing the Pennypack factors. See ZF Meritor, LLC v.
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`Eaton Corp., 696 F.3d 254, 298 (3d Cir. 2012). Caterpillar identified the prejudice it would
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`suffer as the lost opportunity to raise a Daubert challenge to Dr. Seth’s forward patent
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`citation and Rubenstein bargaining model methodology, but it did not identify any other
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`problems with the late disclosure. (See D.I. 326 at 6.) I found that Dr. Seth’s testimony was
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`critically important to Wirtgen’s case and that Caterpillar would suffer minimal prejudice.
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`For Caterpillar’s Daubert challenge, I concluded that Dr. Seth had removed the offending
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`portion of her analysis and that Caterpillar’s other arguments went to weight and not
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`admissibility. As a result, I denied Caterpillar’s motion to exclude, and Dr. Seth testified at
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`trial.
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`In February 2024, Wirtgen tried its case against Caterpillar before a jury. Relevant
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`to these Motions, Wirtgen called the following expert witnesses: Dr. John H. Lumkes; Dr.
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`John Meyer; Dr. Christopher Rahn; Dr. Ricardo Valerdi: and Dr. Seth. Caterpillar
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`presented expert testimony from Dr. Richard Klopp, Dr. Adam Sorini, and Dr. Andrew
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`9
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`Smith. The jury also heard testimony from Eric Engelmann, an engineering manager at
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`Caterpillar.
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`During trial, both Parties moved for JMOL. I denied both Motions. On February
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`22, 2024, the jury returned its verdict. It found that Wirtgen proved that Caterpillar
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`willfully infringed five of its patents (the ‘309, ‘641, ‘530, ‘788, and ‘972 Patents) and that
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`none of those patents is invalid. The jury also found that the ‘268 Patent is invalid as
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`obvious. The jury awarded Wirtgen a total of $12,990,204.96. (See D.I. 346.)
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`Following the jury’s verdict, both Parties filed post-trial motions. Caterpillar seeks
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`JMOL as to (1) Wirtgen’s claims of infringement of the ‘641 Patent (Claim 11), the ‘788
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`Patent (Claim 5), the ‘972 Patent (Claim 12), the ‘309 Patent (Claim 29), the ‘530 Patent
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`(Claims 5 and 22), (2) its claim of invalidity as to the ‘641, ‘972 and ‘788 Patent, and (3) the
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`jury’s finding of willfulness. It also seeks to set Wirtgen’s damages award to zero. In the
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`alternative, Caterpillar seeks a new trial on willfulness. Wirtgen seeks JMOL as to (1) its claim
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`of infringement of the ‘268 Patent and (2) Caterpillar’s claim of invalidity. In the alternative,
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`Wirtgen moves for a new trial with respect to infringement and invalidity of Claim 32 of the
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`‘268 Patent. In a separate post-trial motion, Wirtgen moves for enhanced damages,
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`attorneys’ fees, injunction or ongoing royalties, and other relief. (See D.I. 371.) All three
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`Motions are ripe for disposition.
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`10
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`II.
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`JMOL/NEW TRIAL MOTIONS
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`A.
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`Legal Standard
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`1.
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`Renewed JMOL
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`The Federal Rules of Civil Procedure permit a court to enter judgment as a matter
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`of law against a non-moving party before the case is submitted to the jury where “the
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`court finds that a reasonable jury would not have a legally sufficient evidentiary basis to
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`find for the party on [an] issue[.]” Fed. R. Civ. P. 50(a)(1)(B). Where, as here, the court denies
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`a motion under Rule 50(a), the movant may file a renewed motion for JMOL after trial.
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`See Fed. R. Civ. P. 50(b). In patent cases, district courts apply the law of the regional circuit
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`to JMOL motions. See SRI Int'l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1308 (Fed. Cir. 2019).
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`In the Third Circuit, the standard for post-trial motions for JMOL differ according
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`to whether the movant has the burden of proof. When the non-movant has the burden
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`of proof, motions for JMOL are granted “sparingly” and only where ‘the record is critically
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`deficient of the minimum quantum of evidence’ in support of the verdict.” Eshelman v.
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`Agere Sys., Inc., 554 F.3d 426, 433 (3d Cir. 2009) (quotation omitted). Thus, such motions
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`“may be granted ‘only if, viewing the evidence in the light most favorable to the
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`nonmovant and giving it the advantage of every fair and reasonable inference, there is
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`insufficient evidence from which a jury reasonably could find liability.’” Mancini v.
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`Northampton Cnty., 836 F.3d 308, 314 (3d Cir. 2016) (quotation omitted).
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`11
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`When the movant has the burden of proof, JMOL is only granted where ‘there is
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`insufficient evidence for permitting any different finding.’” Amgen Inc. v. Hospira, Inc., 944
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`F.3d 1327, 1333 (Fed. Cir. 2019) (quoting Fireman's Fund Ins. Co. v. Videfreeze Corp., 540
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`F.2d 1171, 1177 (3d Cir. 1976)). In resolving the motion, a court “may not weigh the
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`evidence, determine the credibility of witnesses, or substitute [its] version of the facts for
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`the jury's version.” Mancini, 836 F.3d at 314 (quotation omitted). The court must draw all
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`reasonable inferences in favor of the nonmoving party. See Lightning Lube, Inc. v. Witco
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`Corp., 4 F.3d 1153, 1166 (3d Cir. 1993).
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`2.
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`New trial
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`Where a court denies a motion for JMOL under Rule 50(a), the movant may request
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`a new trial under Rule 59. See Fed. R. Civ. P. 50(b). Rule 59 permits a court to grant a new
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`trial on all or some of the issues for any reason for which a federal court has granted a
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`new trial. See Fed. R. Civ. P. 59(a)(1)(A). In patent cases, district courts apply the law of the
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`regional circuit to motions for a new trial. See Power Integrations, Inc. v. Fairchild
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`Semiconductor Int'l, Inc., 843 F.3d 1315, 1326 (Fed. Cir. 2016).
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`In the Third Circuit, a court should grant a new trial “only when ‘the great weight
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`of the evidence cuts against the verdict and ... [ ] a miscarriage of justice would result if
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`the verdict were to stand[.]’” Leonard v. Stemtech Int'l Inc., 834 F.3d 376, 386 (3d Cir.
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`2016) (quotation omitted). The court may “not substitute its judgment of the facts and
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`the credibility of the witnesses for that of the jury.” Id. at 386. In granting a motion for a
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`12
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`new trial on the basis of trial error, the judge must consider (1) whether an error was in
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`fact committed and (2) whether that error was so prejudicial that denial of a new trial
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`would be inconsistent with substantial justice. See Farra v. Stanley-Bostitch, Inc., 838 F.
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`Supp. 1021, 1026 (E.D. Pa. 1991), aff’d 31 F.3d 1171 (3d Cir. 1994) (table of cases); see
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`also Ponzini v. Monroe Cty., 789 Fed. App’x 313, 315-16 (3d Cir. 2019).
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`B.
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`Caterpillar’s Motion
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`1.
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`Infringement
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`a.
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`The ‘641 Patent
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`A party asserting induced infringement must prove that: (1) a third party directly
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`infringed the asserted claims of the patent; (2) the alleged infringer induced those
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`infringing acts; and (3) the alleged infringer knew the acts it induced constituted
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`infringement. See Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d
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`1315, 1332 (Fed. Cir. 2016); 35 U.S.C. § 271(b). The defendant must have “knowingly
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`induced infringement and possessed specific intent to encourage another's
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`infringement.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012)
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`(citations omitted). A plaintiff may prove intent by circumstantial evidence. See Water
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`Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 669 (Fed. Cir. 1988). Intent is a “quintessential
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`jury question[].” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1222 (Fed. Cir. 2014).
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`Claim 11 of the ‘641 Patent is a method claim that, relevant here, requires the
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`machine to shut down its rotor when the milling drum falls below a pre-determined
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`13
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`distance between it and the ground. The patent covers a machine that monitors the
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`distance between the drum and the ground, which can happen “either directly or
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`indirectly.” ( ‘641 Patent at 2:57-64.) “[I]ndirect measuring of the distance can be
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`effected, for instance, via machine elements of the construction machine, via tracers or
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`via the actual position of the lifting column carrying the machine frame.” (Id.)
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`The jury heard sufficient evidence that the Accused Machines monitor a distance,
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`as the ‘641 Patent requires. Caterpillar’s machines measure the side plate position and
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`the moldboard relative to the drum. (Tr. 394:20-395:11.) This monitoring is intended to
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`prevent the rotor from hitting the ground surface. The rotor shuts off when the
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`moldboard and sideplates are raised by more than 50 mm. That shutoff is automatic.
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`From this, the jury could conclude that the Accused Machines indirectly monitor a pre-
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`determined distance by measuring the height of the moldboard and sideplates.
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`Caterpillar nonetheless submits that there was insufficient evidence at trial for the
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`jury to find (i) direct infringement by a machine user and (ii) Caterpillar’s specific intent
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`to induce a user’s infringement. Testimony from Mr. Engelmann and Dr. Meyer supports
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`a finding of direct infringement. Mr. Engelmann testified that customers drive backwards
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`in the Accused Machines with the rotor running. (Tr. 404:14-21; 392:25-393:6.) Wirtgen’s
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`expert, Dr. Meyer, testified that when a customer drives in reverse with the milling drum
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`rotating, the reverse-shutoff feature in the machine engages automatically. (Tr. 699:18-
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`700:12.) Dr. Meyer testified that he had “seen video of Caterpillar customers operating
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`14
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`this machine in that fashion.” (See id.) Given this evidence, the jury could credit Dr.
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`Meyer’s opinion that the claimed method is necessarily practiced when customers drive
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`in the manner Mr. Engelmann described or Dr. Meyer witnessed.
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`As for intent, Mr. Engelmann testified that a customer could not remove or
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`disable the reverse shut-off feature on the Caterpillar machines. (Tr. 396:24-397:3.) Dr.
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`Meyer testified that the reverse shut-off feature was preprogrammed into the machines.
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`From that, the jury could reasonably infer that Caterpillar intended to induce
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`infringement. As a matter of law, “a failure to remove or diminish infringing features of a
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`distributed product is relevant to a party’s intent that those features be used for direct
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`infringement.” Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1343 (Fed. Cir. 2008). If
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`the jury believed that Caterpillar sold a product with the infringing feature baked in, it
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`could find induced infringement.6
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`6 I am not convinced that the instructions in the technical manuals support the jury’s
`finding. Instructions are probative of specific intent when they evince “intent to
`encourage infringement.” Vita–Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1329 (Fed.
`Cir. 2009). However, instructions that only “describe an infringing mode is not the same
`as recommending or encouraging” an infringing use. Takeda Pharms. U.S.A., Inc. v. W.-
`Ward Pharm. Corp., 785 F.3d 625, 630–31 (Fed. Cir. 2015) (cleaned up). The technical
`manuals that Dr. Meyer cites do not recommend an infringing use. The manual only
`explains that “[a]n automatic rotor disengagement feature detects a condition where the
`rotor could come in contract with a surface while the machine is traveling in reverse. If
`this rotor exposure is detected, the rotor drive is disengaged.” (See Exs. 368.0360;
`757.0342.) There is no directive, only an explanation of how the reverse shut-off feature
`functions.6 “Merely describing the infringing use … will not suffice” to establish induced
`infringement. HZNP Medicines LLC v. Actavis Lab'ys UT, Inc., 940 F.3d 680, 702 (Fed. Cir.
`2019).
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`15
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 16 of 67 PageID #: 40760
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`Caterpillar presented evidence that its express instructions to customers is to
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`raise the machine when driving in reverse, thus avoiding the need for the reverse shut-
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`off feature to engage. The jury could have concluded based on that evidence that
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`Caterpillar didn’t intend to induce infringement, but it didn’t have to reach that
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`conclusion. Instead, the jury could also have inferred Caterpillar’s specific intent to
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`induce infringement by incorporating a feature in its machines that a user cannot
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`disable and that will necessarily infringe. Thus, on this record, I cannot say that there was
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`insufficient evidence for the jury to find in Wirtgen’s favor.
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`b.
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`The ‘788 Patent
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`The ‘788 Patent relates to a road construction machine with a leveling device to
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`ensure that milling produces an even surface. Relevant here, the invention claims a
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`machine capable of swapping between sensors without interrupting the milling process.
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`Claim 5 depends on Claim 1 and recites a road milling machine wherein “the switchover
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`device and the one of the indication and setting devices associated with the
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`replacement sensor are operable to pre-select the replacement sensor and to pre-set
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`the operating parameter of the replacement sensor prior to effecting the switchover.”
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`(‘788 Patent at 7:64-8:2 (emphasis added).)
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`Wirtgen’s experts opined that the Accused Machines pre-set an operating
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`parameter, have a switchover device, and display a current actual value. Thus, I can’t
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 17 of 67 PageID #: 40761
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`agree with Caterpillar’s contention that there was insufficient evidence that the Accused
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`Machines practice the patent.
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`Pre-set: At trial, the Parties introduced a flowchart that depicted the steps that
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`occur during a sensor swap in the Accused Machines. (See generally Tr. 528:2-20
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`(introducing Ex. 264A).) Both sides presented extensive testimony to explain this
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`flowchart. Wirtgen’s experts, Drs. Valerdi and Rahn, opined that the setting of sensors
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`occurred at the portion of the diagram titled “[b]ench [f]unction.” (Tr. 774:17-775:8
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`(describing Ex. 264A).) Then the sensor is selected after that step, at “[r]esume [a]uto /
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`[c]omplete.” (See id.; Tr. 775:9-14.) The jury was free to believe Wirtgen’s theory that the
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`bench function sets the operating parameter prior to the switchover.
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`Switchover Device: Claim 1 of the ’788 Patent requires the machine have a
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`“switchover device” which, based upon the Parties’ agreed-upon construction, I
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`construed as “[c]ontroller input and output switch.” (D.I. 182.) Caterpillar interprets this
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`as requiring Wirtgen to prove that there is “one digital ‘controller input and output
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`switch’ effectuating the switchover.” (D.I. 381 at 6.) But the claim language is not so
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`limited. Thus, the jury could credit Dr. Rahn’s opinion that “the switch over device is a
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`series of selections by the operator” on the display in the Accused Machines. (Tr. 817:16-
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`818:8.)
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`Current Actual Values: Claim 1 also requires that the sensors sense and indicate
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`“current actual values.” Dr. Rahn testified that the Accused Machines display actual
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`
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`17
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 18 of 67 PageID #: 40762
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`values. (Tr. 804:25-805:13; 868:18-869:5.) The jury could believe this testimony even if Dr.
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`Rahn did not undertake a signal process analysis to determine how the sensors
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`calculated those values. Caterpillar argues that it takes the machines time to process
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`sensor values before those values are displayed so the values cannot be “current.” This
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`disagreement does not change the fact that Dr. Rahn testified that this claim language
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`was, in his opinion, satisfied. The jury was free to disregard the milliseconds-length delay
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`to which Caterpillar refers. Thus, there is sufficient record evidence for the jury to credit
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`and find infringement.
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`c.
`
`The ‘972 Patent
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`The ‘972 Patent recites a method for a road milling machine to position its
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`machine frame parallel to the ground automatically. Claim 12 depends on Claim 1 and
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`recites a road milling machine comprising of “a controller … being configured to
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`automatically control a lifting condition of at least one of the lifting columns to establish
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`a parallel orientation of the machine frame relative to the ground surface in the
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`direction of travel.” (‘972 Patent at 12:12-17.)
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`Wirtgen’s experts, Drs. Lumkes and Valerdi, opined that the Accused Machines
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`establish a parallel orientation automatically, as the claim requires. (Tr. 606:5-12; 612:20-
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`613:9; 615:10-19.) Dr. Lumkes testified that the machines have a “creep-to-inclination”
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`feature that results “in the machine automatically going back to parallel-to-surface
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`orientation.” (Tr. 614:18-25.) Dr. Valerdi testified that Dr. Lumkes based his opinion on
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`
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`18
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 19 of 67 PageID #: 40763
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`an accurate representation of what occurs in the Accused Machines based on his review
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`of the source code. (Tr. 778:7-11.)
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`It's immaterial that Dr. Valerdi also testified that before the machine deploys its
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`creep-to-inclination feature, the operator must calibrate the machine. I will assume
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`arguendo that “automatically” in this patent means “without human intervention,” as
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`Caterpillar submits. The claim language requires automation at the time that the
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`machine establishes a parallel orientation relative to the ground. What’s needed before
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`the positioning to parallel does not disturb a finding of infringement. Indeed, the
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`Federal Circuit has held that infringement is possible when a machine requires user
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`intervention to initiate an automatic process. See Z4 Techs., Inc. v. Microsoft Corp., 507
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`F.3d 1340, 1350 (Fed. Cir. 2007). One district judge explained this seemingly-obvious
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`point: “‘automatic’ operation does not preclude any user involvement, such as in
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`physically connecting devices or providing electrical power.” Papst Licensing GmbH &
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`Co. KG v. Apple Inc., No. 6:15-CV-01095, 2017 WL 897172, at *18 (E.D. Tex. Mar. 7, 2017)
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`(emphasis in original).
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`Also, despite Caterpillar’s argument, it’s not relevant that user error might result
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`in a machine being at an orientation other than parallel. (See D.I. 381 at 8-9.). First,
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`Caterpillar reaches its conclusion for this hypothetical scenario about an operator’s
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`miscalibration by attorney argument, not a fact established in the trial record. Even if the
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`conclusion is sound, the jury could still find infringement. “[I]nfringement is not avoided
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`
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`19
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`Case 1:17-cv-00770-JDW Document 456 Filed 09/17/24 Page 20 of 67 PageID #: 40764
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`merely because a non-infringing mode of operation is possible.” Z4 Techs., Inc., 507 F.3d
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`at 1350. “[A] patent that claims an automobile configured to operate in third gear would
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`be infringed by an automobile that is configured to operate in first, second, and third
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`gears. The automobile is at all times configured to operate in any one of its possible
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`gears, including the infringing one, even if the automobile is never driven in the
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`infringing gear.” Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.