`CATERPILLAR INC.
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`v.
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`Defendant/Counterclaim-Plaintiff.
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`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`Case 1:17-cv-00770-JDW Document 217 Filed 10/05/23 Page 1 of 5 PageID #: 16476
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.’S COMBINED MOTIONS FOR PARTIAL SUMMARY
`JUDGMENT AND MOTION TO EXCLUDE INADMISSIBLE EXPERT TESTIMONY
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`Wirtgen America, Inc. (“Wirtgen”) seeks partial summary judgment of infringement of
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`certain claims, non-infringement of other claims, and seeks to exclude the testimony of
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`Caterpillar, Inc.’s (“Caterpillar”) purported expert witness as set forth in detail in the
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`accompanying Opening Brief in support of this motion. Specifically, Wirtgen seeks the
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`following relief:
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` (A) Summary judgment that certain Caterpillar accused products infringe certain
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`asserted claims of the ’530, ’309, and ’641 patents as set forth below:
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`’530 patent,
`claims 5, 16, and 22
`’309 patent,
`claim 29
`’641 patent,
`claims 11, 17, and 18
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`PM600 and PM800 series with leg position sensors (01A builds
`and 02A, 02B, and 02C builds before any redesign)
`PM600 and PM800 series with ride control (01A builds and 02A,
`02B, and 02C builds before any redesign)
`PM300, PM600, and PM800 series with original reverse rotor
`shutoff software (01A builds and 02A, 02B, and 02C builds before
`any redesign)
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`(B) Summary judgment that Caterpillar is estopped from pursuing its invalidity claims
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`against Wirtgen’s ’530 and ’309 patents under 35 U.S.C. § 315(e).
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`1
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`Case 1:17-cv-00770-JDW Document 217 Filed 10/05/23 Page 2 of 5 PageID #: 16477
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`(C) Summary judgment that the claim scope in its asserted ’268 reissue patent is not
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`broader than the claim scope of the originally issued U.S. Pat. No. 8,408,659.
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`(D) Summary judgment that the accused Wirtgen W207 Fi, W 210 Fi, W 220 Fi, and
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`W250 Fi milling machines do not infringe Caterpillar’s asserted ’618 patent.
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`(E) Exclusion of the testimony of Caterpillar’s proffered willfulness expert—a lawyer
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`with no relevant technical or industry expertise who narrates portions of the ITC record and
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`provides legal opinions on Caterpillar’s state of mind.
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`For the reasons provided in Wirtgen’s accompanying Opening Brief in support of these
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`motions, the Court should grant Wirtgen’s five motions for partial summary judgment and
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`motion to exclude the testimony of Paul Bartowski.
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`Dated: October 5, 2023
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`OF COUNSEL:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
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`- and -
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`Daniel E. Yonan
`Paul A. Ainsworth
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`(202) 371-2600
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Wirtgen America, Inc.
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`Case 1:17-cv-00770-JDW Document 217 Filed 10/05/23 Page 3 of 5 PageID #: 16478
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`dyonan@sternekessler.com
`painsworth@sternekessler.com
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`Case 1:17-cv-00770-JDW Document 217 Filed 10/05/23 Page 4 of 5 PageID #: 16479
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`CERTIFICATION PURSUANT TO D. DEL. LR 7.1.1
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`Pursuant to Rule 7.1.1 of the Local Rules of Civil Practice and Procedure of the United
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`States District Court for the District of Delaware, I hereby certify that the parties have made
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`good faith, reasonable efforts to resolve the matters set forth in this motion, but were unable to
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`do so. These efforts include considerable written correspondence on the subjects of this motion.
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`These efforts also include multiple meet and confer teleconferences where counsel for the parties
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`verbally communicated to try to resolve the matters set forth in this motion, one of which
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`involved Delaware counsel for both parties.
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
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`4
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`Case 1:17-cv-00770-JDW Document 217 Filed 10/05/23 Page 5 of 5 PageID #: 16480
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff, Esquire, hereby certify that on October 5, 2023, I caused the foregoing
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`document to be served by email upon the following counsel:
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`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
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`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
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`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas
`40th Floor
`New York, NY 10019
`lyen@wsgr.com
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`caterpillar@wsgr.com
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Plaintiff
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