Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 1 of 245 PageID #: 16525
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`C.A. No: 17-770-JDW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`
`Pursuant to the Honorable Joshua D. Wolson’s Policies and Procedures Part II.B.5,
`
`Plaintiff Wirtgen America, Inc. (“Wirtgen”) submits the following Statement of Undisputed
`
`Material Facts, followed by responses from Defendant Caterpillar Inc. (“Caterpillar”) and
`
`Wirtgen’s replies.
`
`
`
`Wirtgen is a company that sells and services road construction machinery. It holds
`
`various patents on technology related to road construction machinery, including the patents
`
`asserted in this case. Caterpillar also sells road construction machinery.
`
`Caterpillar’s Response No. 1:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 1:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 2 of 245 PageID #: 16526
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found in Wirtgen’s Complaint. See D.I. 1.
`
`
`
`On July 19, 2017, Wirtgen filed a Complaint in the International Trade Commission
`
`(ITC) alleging that several of Caterpillar’s road-construction machines infringed several of
`
`Wirtgen’s patents. After a full investigation, the ITC found that Caterpillar’s accused machines
`
`did infringe Wirtgen’s patents, and indeed deliberately copied Wirtgen’s technology. Those
`
`findings were affirmed by the Federal Circuit, and the ITC issued a Limited Exclusion Order
`
`prohibiting Caterpillar from importing its infringing machines into the United States.
`
`Caterpillar’s Response No. 2:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5. In any event, this statement overstates and
`
`mischaracterizes the ITC’s findings in the Section 337 investigation.1 For example, the ALJ
`
`found that Caterpillar’s accused PM600 and PM800 machines did not infringe claim 10 of the
`
`’309 patent and that those machines, as well as the PM300 machines, did not infringe certain
`
`claims of the ’641 patent. See Ex. 70 Bartkowski Rebuttal Rpt. Section VI.B.4 (and documents
`
`cited therein). Additionally, ITC findings are not binding or preclusive. See Texas Instruments
`
`
`1 Caterpillar objects to each instance of Wirtgen America’s reliance on any factual findings made
`by the ALJ in connection with any prior ITC proceedings. Those proceedings may involve
`earlier versions of products, non-asserted patents, and non-asserted claims. Even if probative,
`such findings are inadmissible under Federal Rule of Evidence 403. ITC findings are not binding
`or preclusive. See Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569
`(Fed. Cir. 1996). ITC findings are therefore irrelevant and more prejudicial than probative to
`Caterpillar. See FED. R. EVID. 401-403. Caterpillar also disputes that the ITC found that
`Caterpillar deliberately copied Wirtgen Group’s technology. Wirtgen America points to nothing
`from the ITC showing such a finding was made. On the contrary, the ITC determined that “the
`secondary considerations do not provide a material rebuttal to an obviousness argument.” Final
`Initial Determination at 136, 247, 343, 423.
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 3 of 245 PageID #: 16527
`
`Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). ITC findings are
`
`therefore irrelevant and more prejudicial than probative to Caterpillar. See FED. R. EVID. 401-
`
`403; n.1. Caterpillar also disputes that the ITC found that Caterpillar “deliberately copied
`
`Wirtgen’s technology.” Wirtgen America points to nothing from the ITC showing such a finding
`
`was made. On the contrary, the ITC determined that, “the secondary considerations do not
`
`provide a material rebuttal to an obviousness argument.” Ex. 12 Final Initial Determination at
`
`136, 247, 343, 423.
`
`Wirtgen’s Reply No. 2:
`
`
`
`This dispute is not genuine. Caterpillar is well aware of the ITC’s decision and the
`
`Federal Circuit’s affirmance of that decision. Wirtgen does not dispute the accuracy of the
`
`additional context Caterpillar’s response provides, but observes that it is not material to
`
`Wirtgen’s motion, which does not seek summary judgment of infringement on claims that the
`
`ITC found Caterpillar not to infringe.
`
`Wirtgen does not dispute that ITC findings with respect to patent infringement are not
`
`binding on this Court, but notes that ITC determinations—especially those already affirmed by
`
`the Federal Circuit—have material persuasive value at the summary judgment stage. See Tex.
`
`Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996) (“the
`
`district court can attribute whatever persuasive value to the prior ITC decision that it considers
`
`justified”); 28 U.S.C. § 1659(b) (“the record of the proceeding before the United States
`
`International Trade Commission shall be transmitted to the district court and shall be admissible
`
`in the civil action”). Generally, administrative findings give rise to collateral estoppel “[w]hen an
`
`administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly
`
`before it which the parties have had an adequate opportunity to litigate.” United States v. Utah
`
`Construction & Mining Co., 384 U.S. 394 (1966). While ITC determinations meet this standard,
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 4 of 245 PageID #: 16528
`
`and are given preclusive effect in many contexts, they do not bind district courts with the force of
`
`estoppel regarding patent infringement and validity issues. See Union Mfg. Co., Inc. v. Han Baek
`
`Trading Co., Ltd., 763 F.2d 42 (2d Cir. 1985); see also Tandon Corp. v. United States Int'l Trade
`
`Comm'n, 831 F.2d at 1019. Nonetheless, even where agency determinations do not have
`
`collateral estoppel effect, that “does not appear to render the [agency’s] conclusions and
`
`recommendations completely meaningless.” International Tel. & Tel. Co. v. American Tel. &
`
`Tel. Co., 444 F. Supp. 1148, 1160 n.22 (S.D.N.Y. 1978); see also United States v. School Dist. of
`
`Ferndale, Mich., 577 F.2d 1339, 1349-50, 1354-55 (6th Cir. 1978) (giving agency findings no
`
`collateral estoppel but holding them admissible under FRE 803(8)(C)); United States v.
`
`American Tel. & Tel. Co., 498 F. Supp. 353, 365 n.40 (D.D.C. 1980) (finding that a lack of
`
`collateral estoppel effect does not bar use of agency findings as evidence). Accordingly, where
`
`the ITC acts in a judicial capacity and resolves the same disputed question of patent infringement
`
`between the same parties as that presented in district court, and both parties had an adequate
`
`opportunity to litigate the question, there is no reason the district court should blind itself to the
`
`analysis and outcome of the agency proceeding. Indeed, a well-reasoned ITC determination that
`
`has been affirmed by the Federal Circuit resolving the exact questions presented in district court
`
`is highly probative evidence at the summary judgment stage. Caterpillar presents no reason for
`
`this Court to re-litigate these issues further and reach a different outcome.
`
`Finally, Caterpillar’s Rule 403 objection to all ITC factual findings made in connection
`
`with the ITC proceedings, see n.1, is not genuine, as Caterpillar itself seeks to introduce a
`
`lawyer-expert witness for the sole purpose of narrating the record of the ITC trial and
`
`interpreting the ALJ’s findings for the jury. See Ex. 70 Bartkowski Rebuttal Rpt. Section VI.B.4
`
`(and documents cited therein).
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 5 of 245 PageID #: 16529
`
`
`
`Meanwhile, Wirtgen filed the present litigation in this Court, seeking monetary damages
`
`for Caterpillar’s sales of infringing machines. The present litigation asserts, inter alia, the same
`
`patents asserted in the ITC against the same accused machines that the ITC found (and the
`
`Federal Circuit affirmed) to infringe. Wirtgen seeks, in part, summary judgment of infringement
`
`consistent with the ITC’s and Federal Circuit’s prior proceedings.
`
`Caterpillar’s Response No. 3:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5. In any event, this statement is inaccurate, as
`
`only three of the five patents asserted in the ITC are currently asserted in the present litigation.
`
`See Ex. 70 Bartkowski Rebuttal Rpt. ¶ 61. In addition, as explained above in Caterpillar’s
`
`Response No. 2, the ITC found that Caterpillar’s accused machines did not infringe certain
`
`claims of certain patents. The ITC also found that the evidence of secondary considerations (such
`
`as copying and commercial success) was insufficient to materially rebut a finding of
`
`obviousness. See Ex. 12 Final Initial Determination at 136, 247, 343, 423. Additionally, ITC
`
`findings are not binding or preclusive. See Tex. Instruments Inc. v. Cypress Semiconductor
`
`Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). ITC findings are therefore irrelevant and more
`
`prejudicial than probative to Caterpillar. See FED. R. EVID. 401-403; n.1.
`
`Wirtgen’s Reply No. 3:
`
`
`
`This dispute is not genuine. Caterpillar is well aware of the ITC’s decision and the
`
`Federal Circuit’s affirmance of that decision. Wirtgen does not dispute the accuracy of the
`
`additional context Caterpillar’s response provides, but observes that it is not material to
`
`Wirtgen’s motion, which does not seek summary judgment of infringement on patents that are
`
`not asserted in this case. Wirtgen does not dispute that ITC findings are not binding on this
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 6 of 245 PageID #: 16530
`
`Court, but notes that the ITC’s determinations—especially those already affirmed by the Federal
`
`Circuit—are admissible and have material persuasive value at the summary judgment stage. See
`
`28 U.S.C. § 1659(b) (“the record of the proceeding before the United States International Trade
`
`Commission shall be transmitted to the district court and shall be admissible in the civil action”).
`
`Finally, Caterpillar’s Rule 403 objection to all ITC factual findings made in connection with the
`
`ITC proceedings, see n.1, is not genuine, as Caterpillar itself seeks to introduce a lawyer-expert
`
`witness for the sole purpose of narrating the record of the ITC trial and interpreting the ALJ’s
`
`findings for the jury. See Ex. 70 Bartkowski Rebuttal Rpt. Section VI.B.4 (and documents cited
`
`therein).
`
`
`
`Caterpillar has challenged the validity of Wirtgen’s asserted patents (here and before the
`
`PTAB) and has asserted one of its own patents against Wirtgen. Wirtgen seeks summary
`
`judgment to resolve certain legal disputes regarding those defenses and counterclaims, namely
`
`the scope of IPR estoppel precluding Caterpillar’s invalidity arguments against two of Wirtgen’s
`
`asserted patents, the claim scope of Wirtgen’s reissue patent (asserted here, but which was not
`
`asserted in the ITC), subject-matter eligibility of Caterpillar’s asserted patent, and Wirtgen’s
`
`alleged infringement of Caterpillar’s asserted patent.
`
`Caterpillar’s Response No. 4:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 4:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence of this non-controversial fact can be
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 7 of 245 PageID #: 16531
`
`found in Caterpillar’s Answer and Counterclaims and it otherwise restates the relief sought in
`
`Wirtgen’s Motion for Summary Judgment filed herewith.
`
`I.
`
`The Accused Products Infringe the ’530 Patent
`
`
`
`Caterpillar sells large road milling machines in the United States, including model
`
`numbers PM620, PM622, PM820, PM822, PM825. Caterpillar has sold different builds of each
`
`large road milling machine model, designated as the 01A build, the 02A build, the 02B build,
`
`and the 02C build. Caterpillar sold these machines after the ’530 patent issued.
`
`Caterpillar’s Response No. 5:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 5:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at D.I. 186, (identifying representative and represented Accused Products); Ex. 85
`
`Caterpillar’s Responses and Objections to Wirtgen’s First Set of Interrogatories (Nos. 1-20)
`
`(February 7, 2023) at Response No. 20 (identifying the PM620, PM622, PM820, PM822, and
`
`PM825 as models of the Accused Products; identifying the 01A, 02A, and 02B as builds of the
`
`Accused Product models; identifying December 2017 as the earliest first shipment date for
`
`PM820, PM822, and PM825 models); Ex. 16 Engelmann Dep. Tr. 24:2-3, 38:18-21 (identifying
`
`the 02C build).
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 8 of 245 PageID #: 16532
`
`
`
`For purposes of infringement of Wirtgen’s ’530 patent, the PM620 (01A build) machine
`
`or PM6222 (01A build) machine is representative of PM620, PM622, PM820, PM822, and
`
`PM825 machines before any redesigns were implemented. See D.I. 186, at 1.
`
`Caterpillar’s Response No. 6:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 6:
`
`
`
`There is no dispute.
`
`
`
`Caterpillar produced document Ex. 1 CAT0004149, which is a “Technical Presentation”
`
`for the 01A build of the PM620 and PM622 machines.
`
`Caterpillar’s Response No. 7:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 7:
`
`
`
`There is no dispute.
`
`
`
`Caterpillar produced document Ex. 2 CAT-770_004719, which is a “Parts Manual” for
`
`the 01A build of the PM620 and PM622 machines.
`
`Caterpillar’s Response No. 8:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 8:
`
`
`
`There is no dispute.
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 9 of 245 PageID #: 16533
`
`
`
`Caterpillar produced document Ex. 3 CAT-770_009801, which is an “Operation and
`
`Maintenance Manual” for the 01A build of the PM620 and PM622 machines.
`
`Caterpillar’s Response No. 9:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 9:
`
`
`
`There is no dispute.
`
`
`
`
`
`Mr. Eric Engelmann is an engineering manager at Caterpillar. Mr. Engelmann became
`
`the engineering manager for Caterpillar’s cold planer product family in October 2013.
`
`Caterpillar’s Response No. 10:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 10:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 16 Engelmann Dep. Tr. 10:9-11; 16:6-19.
`
`
`
`
`
`Dr. Adam Sorini was retained by counsel for Caterpillar. Dr. Sorini submitted a joint
`
`expert report on behalf of Caterpillar regarding non-infringement of the ’530 patent in this
`
`proceeding.
`
`9
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 10 of 245 PageID #: 16534
`
`Caterpillar’s Response No. 11:
`
`
`
`Undisputed that Dr. Sorini was retained by counsel for Caterpillar. This statement
`
`otherwise lacks specific citations to evidentiary support, as required by Judge Wolson’s Policies
`
`and Procedures Part II.B.5. Dr. Sorini also submitted multiple reports regarding Caterpillar’s
`
`’618 Patent.
`
`Wirtgen’s Reply No. 11:
`
`
`
`There is no dispute that “Dr. Sorini was retained by counsel for Caterpillar.” Caterpillar
`
`identifies no genuine dispute that “Dr. Sorini submitted a joint expert report on behalf of
`
`Caterpillar regarding non-infringement of the ’530 patent in this proceeding,” which joint expert
`
`report is cited in multiple undisputed facts such as Facts 20, 23, 26, 29, 32, 35.
`
`
`
`
`
`Dr. Jospeh Rakow was retained by counsel for Caterpillar. In this proceeding, Dr. Rakow
`
`submitted a joint expert report on behalf of Caterpillar regarding non-infringement of the ’530
`
`patent, and an expert report on behalf of Caterpillar regarding non-infringement of the ’309
`
`patent.
`
`Caterpillar’s Response No. 12:
`
`
`
`Undisputed that Dr. Rakow was retained by counsel for Caterpillar. This statement
`
`otherwise lacks specific citations to evidentiary support, as required by Judge Wolson’s Policies
`
`and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 12:
`
`
`
`There is no dispute that “Dr. Rakow was retained by counsel for Caterpillar.” Caterpillar
`
`identifies no genuine dispute that Dr. Rakow submitted a joint expert report on behalf of
`
`Caterpillar regarding non-infringement of the ’530 patent and an expert report on behalf of
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 11 of 245 PageID #: 16535
`
`Caterpillar regarding non-infringement of the ’309 patent, which reports are cited in multiple
`
`undisputed facts, such as Facts 20, 23, 26, 29, 32, 35, 39, 94.
`
`
`
`
`
`Dr. Richard Klopp was retained by counsel for Caterpillar. Dr. Klopp submitted an expert
`
`report on behalf of Caterpillar regarding non-infringement of the ’641 and 268 patents.
`
`Caterpillar’s Response No. 13:
`
`
`
`Undisputed that Dr. Klopp was retained by counsel for Caterpillar. This statement
`
`otherwise lacks specific citations to evidentiary support, as required by Judge Wolson’s Policies
`
`and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 13:
`
`
`
`There is no dispute that “Dr. Klopp was retained by counsel for Caterpillar.” Caterpillar
`
`does not identify any genuine dispute that Dr. Klopp submitted an expert report on behalf of
`
`Caterpillar regarding non-infringement of the ’641 and 268 patents, see Ex 9, which expert report
`
`is cited in multiple undisputed facts.
`
`
`
`
`
`Dr. Andrew Alleyne provided sworn testimony in an ITC Investigation regarding non-
`
`infringement of the ’530 Patent.
`
`Caterpillar’s Response No. 14:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5. See n.1.
`
`Wirtgen’s Reply No. 14:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 12 of 245 PageID #: 16536
`
`found at Ex. 11 ITC Hearing Transcript (Day 3, Apr. 23, 2018) (Alleyne) 783:13-16
`
`(“Whereupon, ANDREW ALLEYNE was called as a witness and, having first been duly sworn,
`
`was examined and testified as follows:”),
`
`
`
`
`
`
`
`
`
`Dr. John Lumkes was retained by counsel for Wirtgen. Dr. Lumkes submitted an expert
`
`report on behalf of Wirtgen regarding infringement of the ’530 and ’309 patents.
`
`Caterpillar’s Response No. 15:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 15:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 4 Lumkes Initial Expert Report ¶¶ 1-6, 112-268 (cited below for Facts 18, 22, 31,
`
`34, 38, 62, 69, 73, 77, 85, 86, 89, 92, 95, 98, 101, and 108, which are undisputed).
`
`
`
`
`
`Dr. John Meyer was retained by counsel for Wirtgen. Dr. Meyer submitted an expert
`
`report on behalf of Wirtgen regarding infringement of the ’641 patent.
`
`Caterpillar’s Response No. 16:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`12
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 13 of 245 PageID #: 16537
`
`Wirtgen’s Reply No. 16:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Caterpillar is well aware of Dr. Meyer’s role as an expert for
`
`Wirtgen in this case, and Dr. Meyer’s Expert report, for example, Ex 24, is cited in multiple
`
`undisputed Facts.
`
`
`
`
`
`Wirtgen asserts, among another claim, dependent claims 5, 16, and 22 of the ’530 patent
`
`against Caterpillar’s PM620, PM622, PM820, PM822, and PM825 milling machines with in-
`
`cylinder leg position sensors. Dependent claims 5 and 16 depend from claim 2, which depends
`
`from independent claim 1. Dependent 22 depends directly from independent claim 1.
`
`Caterpillar’s Response No. 17:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 17:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Lumkes Initial Expert Report ¶¶ 6 6, 148-268 (cited below for Facts 18, 22, 31, 34, 38,
`
`62, 69, 73, 77, 85, 86, 89, 92, 95, 98, 101, and 108, which are undisputed) (cited below for Facts
`
`18, 22, 31, 34, 38, 62, 69, 73, 77, 85, 86, 89, 92, 95, 98, 101, and 108, which are undisputed).
`
`
`
`
`
`The preamble ([1pre]) of claim 1 of the ’530 patent recites “[a] road construction
`
`machine.” The PM620 (01A build) machine is a cold milling machine, which is also referred to
`
`13
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 14 of 245 PageID #: 16538
`
`as a cold planer. A cold milling machine is a road construction machine. Ex. 3 CAT-770_009801
`
`(OMM) at 9846; Ex. 4 Lumkes Initial Expert Report at ¶¶ 151-153.
`
`Ex. 5 CAT0004583 at 4583; Ex. 1 CAT-770_004149 at 4155
`
`
`
`Caterpillar’s Response No. 18:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 18:
`
`
`
`There is no dispute.
`
`
`
`
`
`The PM620 (01A build) machine satisfies the preamble [1pre] of the ’530 patent.
`
`Caterpillar’s Response No. 19:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 19:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`14
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 15 of 245 PageID #: 16539
`
`found at Ex. 3 CAT-770_009801 (OMM) at 9846; Ex. 4 Lumkes Initial Expert Report at ¶¶ 151-
`
`153 (cited above for Fact 18 which is undisputed).
`
`
`
`
`
`Caterpillar’s experts in this proceeding, Drs. Sorini and Rakow, do not provide a separate
`
`non-infringement opinion regarding the preamble [1pre] of the ’530 patent. See Ex. 6 Sorini-
`
`Rakow Rebuttal Report, ¶¶ 69-101.
`
`Caterpillar’s Response No. 20:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 20:
`
`
`
`There is no dispute.
`
`
`
`
`
`The PM620 (01A build) machine satisfies the preamble [1pre] of the ’530 patent.
`
`Caterpillar’s Response No. 21:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 21:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 3 CAT-770_009801 (OMM) at 9846; Ex. 4 Lumkes Initial Expert Report at ¶¶ 151-
`
`153; Ex. 5 CAT0004583 at 4583; Ex. 1 CAT-770_004149 at 4155 (cited above for Fact 18,
`
`which is undisputed).
`
`15
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 16 of 245 PageID #: 16540
`
`
`
`
`
`Claim element [1a] of the ’530 patent recites “a machine frame.” The PM620 (01A build)
`
`machine includes a frame that structurally supports the various machine components. Ex. 2
`
`CAT-770_004719 at 5222; Ex. 4 Lumkes Initial Expert Report at ¶¶ 154-155.
`
`Ex. 2 CAT-770_004719 at 5222
`
`
`
`Caterpillar’s Response No. 22:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 22:
`
`
`
`There is no dispute.
`
`
`
`
`
`Caterpillar’s experts in this proceeding, Drs. Sorini and Rakow, do not provide a separate
`
`non-infringement opinion regarding claim element [1a] of the ’530 patent. See Ex. 6 Sorini-
`
`Rakow Rebuttal Report, ¶¶ 69-101.
`
`16
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 17 of 245 PageID #: 16541
`
`Caterpillar’s Response No. 23:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 23:
`
`
`
`There is no dispute.
`
`
`
`
`
`The PM620 (01A build) machine satisfies the claim element [1a] of the ’530 patent.
`
`Caterpillar’s Response No. 24:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 24:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 2 CAT-770_004719 at 5222; Ex. 4 Lumkes Initial Expert Report at ¶¶ 154-155,
`
`(cited above for Fact 22 which is undisputed).
`
`
`
`
`
`Claim element [1b] of the ’530 patent recites “a working drum supported from the
`
`machine frame for working a ground surface or traffic surface.” The PM620 (01A build)
`
`machine includes a rotating rotor drum with teeth that mills the ground or traffic surface into
`
`small pieces; the rotor drum is supported from the machine frame. Ex. 2 CAT-770_004719 (Parts
`
`Manual) at 5463; Ex. 1 CAT0004149 (Technical Presentation) at 4490; Ex. 4 Lumkes Initial
`
`Expert Report at ¶¶ 156-166; Ex. 6 Sorini-Rakow Rebuttal Report, ¶ 43 (“The milling of the
`
`paved surface is performed by a rotor equipped with milling tools, as shown in Figure 2 The
`
`17
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 18 of 245 PageID #: 16542
`
`rotor is attached to the machine frame within a milling chamber, a portion of which is comprised
`
`of hydraulic side plates.”).
`
`Ex. 5 CAT0004583 at 4803; Ex. 1 CAT0004149 at 4490
`
`
`
`18
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 19 of 245 PageID #: 16543
`
`Ex. 2 CAT-770_004719 at 5463
`
`
`
`Caterpillar’s Response No. 25:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 25:
`
`
`
`There is no dispute.
`
`19
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 20 of 245 PageID #: 16544
`
`
`
`
`
`Caterpillar’s experts in this proceeding, Drs. Sorini and Rakow, do not provide a separate
`
`non-infringement opinion regarding claim element [1b] of the ’530 patent. See Ex. 6 Sorini-
`
`Rakow Rebuttal Report, ¶¶ 69-101.
`
`Caterpillar’s Response No. 26:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 26:
`
`
`
`There is no dispute.
`
`
`
`
`
`The PM620 (01A build) machine satisfies the claim element [1b] of the ’530 patent.
`
`Caterpillar’s Response No. 27:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 27:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 2 CAT-770_004719 (Parts Manual) at 5463; Ex. 1 CAT0004149 (Technical
`
`Presentation) at 4490; Ex. 4 Lumkes Initial Expert Report at ¶¶ 156-166; Ex. 6 Sorini-Rakow
`
`Rebuttal Report, ¶ 43; Ex. 5 CAT0004583 at 4803, (cited above for Fact 25, which is
`
`undisputed).
`
`
`
`
`
`Claim element [1c] of the ’530 patent recites “a plurality of ground engaging supports for
`
`supporting the construction machine on the ground surface or traffic surface.” The PM620 (01A
`
`20
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 21 of 245 PageID #: 16545
`
`build) machine includes four track assemblies that contact the ground and rotate to propel the
`
`machine forward or backward. Ex. 2 CAT-770_004719 at 5223-5226, 5250; Ex.1 CAT0004149
`
`(Technical Presentation) at 4312; Ex. 4 Lumkes Initial Expert Report, ¶ 167; Ex. 6 Rakow-Sorini
`
`Rebuttal Report, ¶ 46 (“Ground engaging elements,” section explaining “[t]he machine possesses
`
`four crawler tracks, i.e., caterpillars. These tracks support the machine as well as allow the
`
`machine to traverse the milling surface.”).
`
`
`
`Ex. 5 CAT0004583 at 4708; Ex. 1 CAT0004149 (Technical Presentation) at 4312
`
`
`
`Caterpillar’s Response No. 28:
`
`
`
`Disputed. Wirtgen America lacks factual support for the term “rotates.” Ex. 6 Rakow-
`
`Sorini Rebuttal Rpt. ¶ 46. As discussed by Caterpillar’s experts, “[t]he machine possesses four
`
`crawler tracks, i.e., caterpillars. These tracks support the machine as well as allow the machine to
`
`traverse the milling surface.” Id.
`
`21
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 22 of 245 PageID #: 16546
`
`Wirtgen’s Reply No. 28:
`
`
`
`There is no dispute that Claim element [1c] of the ’530 patent recites “a plurality of
`
`ground engaging supports for supporting the construction machine on the ground surface or
`
`traffic surface,” or that the PM620 (01A build) machine includes four track assemblies that
`
`contact the ground and propel the machine forward or backward.
`
`
`
`
`
`Caterpillar’s experts in this proceeding, Drs. Sorini and Rakow, do not provide a separate
`
`non-infringement opinion regarding claim element [1c] of the ’530 patent. See Ex. 6 Sorini-
`
`Rakow Rebuttal Report, ¶¶ 69-101.
`
`Caterpillar’s Response No. 29:
`
`
`
`Undisputed.
`
`Wirtgen’s Reply No. 29:
`
`
`
`There is no dispute.
`
`
`
`
`
`The PM620 (01A build) machine satisfies the claim element [1c] of the ’530 patent.
`
`Caterpillar’s Response No. 30:
`
`
`
`Disputed. This statement lacks specific citations to evidentiary support, as required by
`
`Judge Wolson’s Policies and Procedures Part II.B.5.
`
`Wirtgen’s Reply No. 30:
`
`
`
`This dispute is not genuine. Caterpillar identifies no substantive disagreement with this
`
`foundational fact as stated, nor does it cite any counterevidence as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5. Regardless, evidence for this non-controversial fact can be
`
`found at Ex. 2 CAT-770_004719 at 5223-5226, 5250; Ex.1 CAT0004149 (Technical
`
`22
`
`

`

`Case 1:17-cv-00770-JDW Document 219 Filed 10/05/23 Page 23 of 245 PageID #: 16547
`
`Presentation) at 4312; Ex. 4 Lumkes Initial Expert Report, ¶ 167; Rakow-Sorini Rebuttal Report,
`
`¶ 46; Ex. 5 CAT0004583 at 4708, (cited above for Fact 28).
`
`
`
`
`
`Claim element [1d] of the ’530 patent recites “a plurality of lifting columns, each one of
`
`the lifting columns being connected between the machine fr