throbber
Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 1 of 15 PageID #: 16770
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No: 17-770-JDW
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`Plaintiff,
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`v.
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`Defendant.
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`DECLARATION OF JOSEPH H. KIM IN SUPPORT OF WIRTGEN AMERICA,
`INC.’S COMBINED MOTIONS FOR PARTIAL SUMMARY JUDGMENT AND
`MOTION TO EXCLUDE INADMISSIBLE EXPERT TESTIMONY
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`I am an attorney with Sterne, Kessler, Goldstein & Fox P.L.L.C., and serve as counsel for
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`Plaintiff Wirtgen America, Inc. I submit this declaration in support of Plaintiff’s summary
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`judgment and Daubert motions. I have personal knowledge of the matters stated in this
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`Declaration and could testify to them competently if called upon to do so.
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`1.
`
`Attached hereto as Exhibit 1 is a true and correct excerpt of Caterpillar’s
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`Technical Presentation for the PM620 and PM622 Cold Planers, bearing publication number
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`QESV2195 and publication date of August 2016, that was produced in Certain Road Milling
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`Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a
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`starting Bates label CAT0004149.
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`2.
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`Attached hereto as Exhibit 2 is a true and correct excerpt of Caterpillar’s Parts
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`Manual for the PM620 Cold Planer, bearing publication number KEBP6265-10 and publication
`
`date of January 2017, that was produced by Caterpillar with a starting Bates label
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`CAT-770_004719.
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`1
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 2 of 15 PageID #: 16771
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`3.
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`Attached hereto as Exhibit 3 is a true and correct excerpt of Caterpillar’s
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`Operation and Maintenance Manual for the PM620 and PM622 Cold Planers, bearing
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`publication number M0103049-07 and publication date of July 2021, that was produced by
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`Caterpillar with a starting Bates label CAT-770_009801.
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`4.
`
`Attached hereto as Exhibit 4 is a true and correct excerpt of the Initial Expert
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`Report of Dr. John H. Lumkes, dated May 18, 2023.
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`5.
`
`Attached hereto as Exhibit 5 is a true and correct excerpt of a series of images of
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`Caterpillar’s cold planer machines that was produced in Certain Road Milling Machines and
`
`Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a starting Bates
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`label CAT0004583.
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`6.
`
`Attached hereto as Exhibit 6 is a true and correct excerpt of the Joint Rebuttal
`
`Expert of Joseph Rakow, Ph.D., P.E., F.A.S.M.E. and Adam Sorini, Ph.D., dated June 16, 2023.
`
`7.
`
`Attached hereto as Exhibit 7 is a true and correct excerpt of the Corrected Non-
`
`Confidential Brief of Appellants, filed in Caterpillar Prodotti Stradali S.R.L. v. International
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`Trade Commission, 19-2445 (Fed. Cir.) (D.I. 31-1) on December 20, 2019.
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`8.
`
`Attached hereto as Exhibit 8 is a true and correct excerpt of the Rebuttal Expert
`
`Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E., dated June 16, 2023.
`
`9.
`
`Attached hereto as Exhibit 9 is a true and correct excerpt of the Rebuttal Expert
`
`Report of Richard W. Klopp, Ph.D., P.E., F.A.S.M.E., dated June 16, 2023.
`
`10.
`
`Attached hereto as Exhibit 10 is a true and correct excerpt of the transcript of
`
`Videotaped Deposition of Joseph F. Rakow, taken on August 16, 2023.
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`11.
`
`Attached hereto as Exhibit 11 is a true and correct excerpt of the hearing
`
`transcript in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), on April 19, 2018, and April 23, 2018.
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`2
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 3 of 15 PageID #: 16772
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`12.
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`Attached hereto as Exhibit 12 is a true and correct excerpt of the Final Initial
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`Determination issued by Administrative Law Judge David P. Shaw in Certain Road Milling
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`Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.), dated October 1, 2018,
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`that was produced by Caterpillar with a starting Bates label CAT-770_080325.
`
`13.
`
`Attached hereto as Exhibit 13 is a true and correct excerpt of Caterpillar’s
`
`Systems Operation Testing and Adjusting manual, bearing publication number UENR6294 and
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`publication date of October 2016, that was produced in Certain Road Milling Machines and
`
`Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a starting Bates
`
`label CAT0007161.
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`14.
`
`Attached hereto as Exhibit 14 is a true and correct excerpt of Caterpillar’s
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`Systems Operation Troubleshooting manual of the Electronic System for the PE622, PM620, and
`
`PM622 Cold Planers, bearing publication number UENR6406 and publication date of March
`
`2016, that was produced natively by Caterpillar with Bates label CAT_00057221.
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`15.
`
`Attached hereto as Exhibit 15 is a true and correct excerpt of Caterpillar’s
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`Operation and Maintenance Manual of the Cat® Grade & Slope for Cold Planers, bearing
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`publication number M0065300 and publication date of November 2016, that was produced in
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`Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by
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`Caterpillar with a starting Bates label CAT0002846.
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`16.
`
`Attached hereto as Exhibit 16 is a true and correct excerpt of the transcript of
`
`Video Deposition of Eric Engelmann, Volume I of II taken on March 16, 2023, and Volume II of
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`II taken on March 17, 2023.
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`17.
`
`Attached hereto as Confidential Exhibit 17 is a true and correct copy of a
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`computer-aided design drawing that was produced natively in Certain Road Milling Machines
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`3
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 4 of 15 PageID #: 16773
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`and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with Bates label
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`CAT0055043.
`
`18.
`
`Attached hereto as Exhibit 18 is a true and correct excerpt of Caterpillar’s
`
`Responses to Complainant Wirtgen America’s Fourth Set of Requests for Admissions
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`(Nos. 1530-1632), dated January 10, 2018.
`
`19.
`
`Attached hereto as Exhibit 19 is a true and correct excerpt of U.S. Patent
`
`No. 7,530,641.
`
`20.
`
`Attached hereto as Exhibit 20 is a true and correct excerpt of Caterpillar’s ITC
`
`hearing exhibit number RX-0993C, the Rebuttal Witness Statement of Mr. Eric Engelmann
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 27, 2018.
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`21.
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`Attached hereto as Exhibit 21 is a true and correct excerpt of Exhibit 35 to the
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`Verified Complaint filed by Wirtgen America, Inc., in Certain Road Milling Machines and
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`Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.), dated July 19, 2017.
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`22.
`
`Attached hereto as Exhibit 22 is a true and correct excerpt of the Issuance of a
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`Modified Limited Exclusion Order and Two Modified Cease and Desis Orders; Termination of
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`Remand Investigation, issued in Certain Road Milling Machines and Components Thereof, Inv.
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`No. 337-TA-1067 (U.S.I.T.C.) by the U.S. International Trade Commission, dated
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`November 4, 2021.
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`23.
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`Attached hereto as Exhibit 23 is a true and correct excerpt of Caterpillar’s
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`PM310, PM312, PM313 Product Manual, bearing publication number QEHQ2423 and
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`publication date of July 2018, that was produced by Caterpillar with a starting Bates label
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`CAT-770_044295.
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`4
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 5 of 15 PageID #: 16774
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`24.
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`Attached hereto as Exhibit 24 is a true and correct excerpt of the Initial Expert
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`Report of Dr. John Meyer, dated May 19, 2023.
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`25.
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`Attached hereto as Exhibit 25 is a true and correct excerpt of Appendix E to the
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`Initial Expert Report of Dr. John Meyer, dated May 19, 2023.
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`26.
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`Attached hereto as Exhibit 26 is a true and correct excerpt of Caterpillar’s PM620
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`and PM622 Cold Planers Product Manual, bearing publication number QEHQ1978-02 and
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`publication date of July 2016, that was produced by Caterpillar with a starting Bates label
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`CAT-770_041484.
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`27.
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`Attached hereto as Exhibit 27 is a true and correct copy of Appendix D to the
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`Initial Expert Report of Dr. John Meyer, dated May 19, 2023.
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`28.
`
`Attached hereto as Exhibit 28 is a true and correct excerpt of Caterpillar’s
`
`Technical Presentation for the PM310, PM312, and PM313 Cold Planers, bearing publication
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`number QESV2314-02 and publication date of October 2021, that was produced by Caterpillar
`
`with a starting Bates label CAT-770_043792.
`
`29.
`
`Attached hereto as Exhibit 29 is a true and correct excerpt of the transcript of
`
`Videotaped Deposition of Richard W. Klopp, taken on August 17, 2023.
`
`30.
`
`Attached hereto as Exhibit 30 is a true and correct excerpt of Caterpillar’s
`
`Systems Operation Testing and Adjusting manual of the Machine Systems for the PM310,
`
`PM312, and PM313 Cold Planers, bearing publication number M0072006-02 and publication
`
`date of June 2020, that was produced by Caterpillar with a starting Bates label
`
`CAT-770_021849.
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`31.
`
`Attached hereto as Exhibit 31 is a true and correct excerpt of Wirtgen America’s
`
`ITC hearing exhibit number CX-0006C, the Direct Witness Statement of Dr. John Meyer
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`5
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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 6 of 15 PageID #: 16775
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 13, 2018.
`
`32.
`
`Attached hereto as Exhibit 32 is a true and correct excerpt of Wirtgen America’s
`
`and Caterpillar’s Joint ITC hearing exhibit number JX-0028C, the transcript of Videotaped
`
`Deposition of Timothy J. Lindholm, taken on January 3, 2018.
`
`33.
`
`Attached hereto as Exhibit 33 is a true and correct excerpt of Wirtgen America’s
`
`and Caterpillar’s Joint ITC hearing exhibit number JX-0030C, the transcript of Videotaped
`
`Deposition of Timothy O’Donnell, taken on January 5, 2018.
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`34.
`
`Attached hereto as Exhibit 34 is a true and correct copy of Wirtgen America’s
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`ITC hearing exhibit number CX-0979C, Caterpillar’s Parts Manual for the PM622 Cold Planer,
`
`bearing publication number KEBP6225-07 and publication date of January 2017, that was
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`produced in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.) by Caterpillar with a starting Bates label CAT0000862.
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`35.
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`Attached hereto as Exhibit 35 is a true and correct excerpt of Wirtgen America’s
`
`ITC hearing exhibit number CX-0049C, Caterpillar’s draft Technical Presentation for the PM300
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`series Cold Planers, bearing publication number QESV TBD, that was produced in Certain Road
`
`Milling Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar
`
`with a starting Bates label CAT0045464.
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`36.
`
`Attached hereto as Exhibit 36 is a true and correct copy of Wirtgen America’s
`
`physical ITC hearing exhibit number CPX-0052C, a video of Caterpillar’s PM312 machine
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`driving backwards that was produced natively by Wirtgen America with Bates label
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`WA-ITC_00458720.
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`37.
`
`Attached hereto as Exhibit 37 is a true and correct excerpt of the public version
`
`of the Final Written Decision (Revised) issued by the Patent Trial and Appeal Board of the inter
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`6
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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 7 of 15 PageID #: 16776
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`partes review of U.S. Patent No. 7,828,309 in Caterpillar Inc. v. Wirtgen America, Inc., Case
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`IPR2017-02185 (P.T.A.B.), Paper 51, entered July 17, 2019, that was produced by Caterpillar
`
`with a starting Bates label EXPONENT_0004927.
`
`38.
`
`Attached hereto as Exhibit 38 is a true and correct copy of Caterpillar’s PM-565B
`
`Cold Planer Product Manual, bearing publication number QEHQ9435-02 and publication date of
`
`June 2001, that was produced by Caterpillar with a starting Bates label CAT-770_047020.
`
`39.
`
`Attached hereto as Exhibit 39 is a true and correct copy of Caterpillar’s PM-565
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`Cold Planer Product Catalog, bearing publication number QEHQ8989 and publication date of
`
`December 1992, that was produced by Caterpillar with a starting Bates label CAT-770_050843.
`
`40.
`
`Attached hereto as Exhibit 40 is a true and correct copy of Caterpillar’s PM-565B
`
`Cold Planer Introduction Presentation, bearing a copyright date of 1998, that was produced
`
`natively by Caterpillar with Bates label CAT_00043417.
`
`41.
`
`Attached hereto as Exhibit 41 is a true and correct copy of Caterpillar’s Technical
`
`Presentation for the PM-565 Cold Planer, bearing publication number QESV9008 and
`
`publication date of August 1993, that was produced by Caterpillar with a starting Bates label
`
`CAT-770_065297.
`
`42.
`
`Attached hereto as Exhibit 42 is a true and correct copy of Caterpillar’s Technical
`
`Presentation for the PM-565B Cold Planer, bearing publication number QESV9460 and
`
`publication date of July 1998, that was produced by Caterpillar with a starting Bates label
`
`CAT-770_066610.
`
`43.
`
`Attached hereto as Exhibit 43 is a true and correct copy of Caterpillar’s PM-465
`
`Cold Planer Product Manual, bearing publication number QEHQ9654 and publication date of
`
`April 1999, that was produced by Caterpillar with a starting Bates label CAT-770_047008.
`
`7
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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 8 of 15 PageID #: 16777
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`44.
`
`Attached hereto as Exhibit 44 is a true and correct copy of Caterpillar’s Systems
`
`Operation Testing & Adjusting manual of the Auxiliary Hydraulic System for the PM-465 Cold
`
`Planer, bearing publication number KENR3098 and publication date of February 1998, that was
`
`produced by Caterpillar with a starting Bates label CAT-770_047793.
`
`45.
`
`Attached hereto as Exhibit 45 is a true and correct copy of German Patent
`
`Publication DE 1918 393 to Neumeier, in the original German and certified English translation
`
`that was produced in Certain Road Milling Machines and Components Thereof, Inv.
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`No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a starting Bates label CAT0013661.
`
`46.
`
`Attached hereto as Exhibit 46 is a true and correct copy of Appendix C to the
`
`Opening Expert Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E., dated May 19, 2023.
`
`47.
`
`Attached hereto as Exhibit 47 is a true and correct copy of Appendix D to the
`
`Opening Expert Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E., dated May 19, 2023.
`
`48.
`
`Attached hereto as Exhibit 48 is a true and correct excerpt of Caterpillar’s ITC
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`hearing exhibit number RX-0987C, the Direct Witness Statement of Mr. Eric Engelmann
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 13, 2018.
`
`49.
`
`Attached hereto as Exhibit 49 is a true and correct excerpt of Caterpillar’s ITC
`
`hearing exhibit number RX-0988C, the Initial Witness Statement of Mr. Conwell K. Rife, Jr.,
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 13, 2018.
`
`50.
`
`Attached hereto as Exhibit 50 is a true and correct copy of a picture of a
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`Caterpillar cold planer machine that was produced by Caterpillar with Bates label
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`EXPONENT_0000957.
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`8
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 9 of 15 PageID #: 16778
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`51.
`
`Attached hereto as Exhibit 51 is a true and correct copy of a picture of a
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`Caterpillar cold planer machine that was produced by Caterpillar with Bates label
`
`EXPONENT_0000958.
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`52.
`
`Attached hereto as Exhibit 52 is a true and correct copy of a picture of a
`
`Caterpillar cold planer machine that was produced by Caterpillar with Bates label
`
`EXPONENT_0001465.
`
`53.
`
`Attached hereto as Exhibit 53 is a true and correct copy of Roadtec’s RX-500
`
`Milling Machine Operation, Service & Maintenance manual, bearing publication number
`
`204924-A, that was produced by Caterpillar with a starting Bates label CAT-770_092082.
`
`54.
`
`Attached hereto as Exhibit 54 is a true and correct copy of Roadtec’s RX-500-4
`
`Milling Machine Parts Manual, bearing publication number 204922(4)-A, that was produced by
`
`Caterpillar with a starting Bates label CAT-770_092264.
`
`55.
`
`Attached hereto as Exhibit 55 is a true and correct excerpt of the Final Written
`
`Decision issued by the Patent Trial and Appeal Board of the inter partes review of U.S. Patent
`
`No. 9,656,530 in Caterpillar Inc. v. Wirtgen America, Inc., Case IPR2017-02188 (P.T.A.B.),
`
`Paper 71, filed July 15, 2019.
`
`56.
`
`Attached hereto as Exhibit 56 is a true and correct excerpt of the Petition for Inter
`
`Partes Review filed by Caterpillar of the inter partes review of U.S. Patent No. 9,656,530 in
`
`Caterpillar, Inc. v. Wirtgen America, Inc., Case No. IPR2017-02188 (P.T.A.B.), Paper 1, filed
`
`October 19, 2017.
`
`57.
`
`Attached hereto as Exhibit 57 is a true and correct copy of Caterpillar’s
`
`Operation & Maintenance Manual for the PM-565 Cold Planer, bearing publication number
`
`KEBU6664-02 and publication date of January 1995, that was produced by Caterpillar with a
`
`starting Bates label CAT-770_065145 and was a reproduction from Certain Road Milling
`
`9
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 10 of 15 PageID #: 16779
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`Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a
`
`starting Bates label CAT00029522.
`
`58.
`
`Attached hereto as Exhibit 58 is a true and correct copy of Caterpillar’s
`
`Operation & Maintenance Manual for the PM-565 Cold Planer, bearing publication number
`
`KEBU6664 and publication date of January 1993, that was produced by Caterpillar with a
`
`starting Bates label CAT-770_048823.
`
`59.
`
`Attached hereto as Exhibit 59 is a true and correct copy of U.S. Patent No.
`
`6,234,061.
`
`60.
`
`Attached hereto as Exhibit 60 is a true and correct copy of Appendix F to the
`
`Joint Opening Expert Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E. and Adam Sorini, Ph.D.,
`
`dated May 19, 2023.
`
`61.
`
`Attached hereto as Exhibit 61 is a true and correct excerpt of the transcript of In-
`
`Person Videotaped Deposition of Dr. Adam Sorini, Ph.D., taken on August 11, 2023.
`
`62.
`
`Attached hereto as Exhibit 62 is a true and correct excerpt of a certified copy of
`
`the file history for U.S. Patent No. RE48,268, and was produced by Wirtgen America with a
`
`starting Bates label WA-0007038.
`
`63.
`
`Attached hereto as Exhibit 63 is a true and correct excerpt of the Rebuttal Expert
`
`Report of Dr. Durham K. Giles, dated June 16, 2023.
`
`64.
`
`Attached hereto as Exhibit 64 is a true and correct copy of a picture of the frame
`
`of a Wirtgen America milling machine that was produced by Wirtgen America with Bates label
`
`WA-17232181.
`
`65.
`
`Attached hereto as Exhibit 65 is a true and correct copy of a picture of the frame
`
`of a Wirtgen America milling machine that was produced by Wirtgen America with Bates label
`
`WA-17232183.
`
`10
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`

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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 11 of 15 PageID #: 16780
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`66.
`
`Attached hereto as Exhibit 66 is a true and correct copy of a picture of the frame
`
`of a Wirtgen America milling machine that was produced by Wirtgen America with Bates label
`
`WA-17232180.
`
`67.
`
`Attached hereto as Exhibit 67 is a true and correct copy of computer-aided design
`
`drawings that were produced natively by Wirtgen America with Bates label WA-17233098.
`
`68.
`
`Attached hereto as Exhibit 68 is a true and correct excerpt of the transcript of
`
`Video Deposition of Durham Giles, Ph.D., taken on August 24, 2023.
`
`69.
`
`Attached hereto as Exhibit 69 is a true and correct excerpt of the Opening Expert
`
`Report of Dr. Adam Sorini, dated May 19, 2023.
`
`70.
`
`Attached hereto as Exhibit 70 is a true and correct excerpt of the Rebuttal Expert
`
`Report of Paul Bartkowski, dated June 16, 2023.
`
`71.
`
`Attached hereto as Exhibit 71 is a true and correct excerpt of the transcript of
`
`Deposition of John Meyer, Ph.D., taken on August 17, 2023.
`
`72.
`
`Attached hereto as Exhibit 72 is a true and correct excerpt of Caterpillar’s Tier 4F
`
`Cold Planer requirements for the All Raise/Lower Feature that was produced by Caterpillar with
`
`a starting Bates label CAT_00057491.
`
`73.
`
`Attached hereto as Exhibit 73 is a true and correct excerpt of the transcript of
`
`Videotaped Deposition of Dr. John Lumkes, taken on August 11, 2023.
`
`74.
`
`Attached hereto as Exhibit 74 is a true and correct excerpt of the Reply Expert
`
`Report of Dr. John Meyer Concerning the Infringement of U.S. Patent No. 7,530,641, dated
`
`July 7, 2023.
`
`75.
`
`Attached hereto as Exhibit 75 is a true and correct excerpt of the transcript of
`
`Videotaped Deposition of Eric Engelmann, taken on January 12, 2018.
`
`11
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`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 12 of 15 PageID #: 16781
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`76.
`
`Attached hereto as Exhibit 76 is a true and correct excerpt of the Opening Expert
`
`Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E., dated May 19, 2023.
`
`77.
`
`Attached hereto as Exhibit 77 is a true and correct copy of the Final Written
`
`Decision issued by the Patent Trial and Appeal Board of the inter partes review of U.S. Patent
`
`No. 9,656,530 in Caterpillar Inc. v. Wirtgen America, Inc., Case IPR2017-02188 (P.T.A.B.),
`
`Paper 71, filed July 15, 2019, and was produced by Caterpillar with a starting Bates label
`
`EXPONENT_0005166.
`
`78.
`
`Attached hereto as Exhibit 78 is a true and correct copy of Caterpillar’s Technical
`
`Presentation for the PM-565 Cold Planer, bearing publication number QESV9008 and
`
`publication date of August 1993, that was produced natively by Caterpillar with Bates label
`
`CAT_00056223 and was a reproduction from Certain Road Milling Machines and Components
`
`Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.) by Caterpillar with a starting Bates label
`
`CAT0029682.
`
`79.
`
`Attached hereto as Exhibit 79 is a true and correct excerpt of the Joint Opening
`
`Expert Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E. and Adam Sorini, Ph.D., dated
`
`May 19, 2023.
`
`80.
`
`Attached hereto as Exhibit 80 is a true and correct excerpt of Caterpillar’s
`
`confidential source code that was produced by Caterpillar with a starting Bates label
`
`CAT_SourceCode_000929.
`
`81.
`
`Attached hereto as Exhibit 81 is a true and correct copy of Caterpillar’s PM-565
`
`controls technical documentation that was produced natively by Caterpillar with Bates label
`
`CAT_00057447.
`
`82.
`
`Attached hereto as Exhibit 82 is a true and correct excerpt of U.S. Patent
`
`No. RE48,268.
`
`12
`
`

`

`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 13 of 15 PageID #: 16782
`
`83.
`
`Attached hereto as Exhibit 83 is a true and correct excerpt of U.S. Patent
`
`No. 9,371,618.
`
`84.
`
`Attached hereto as Exhibit 84 is a true and correct excerpt of the Reply Expert
`
`Report of Dr. Adam Sorini, dated July 7, 2023.
`
`85.
`
`Attached hereto as Exhibit 85 is a true and correct excerpt of Caterpillar’s
`
`Responses and Objections to Wirtgen America, Inc.’s First Set of Interrogatories (Nos. 1-20),
`
`dated February 7, 2023.
`
`86.
`
`Attached hereto as Exhibit 87 is a true and correct excerpt of the transcript of
`
`Videotaped Deposition of Paul Bartkowski, dated July 28, 2023.
`
`87.
`
`Attached hereto as Exhibit 88 is a true and correct excerpt of Caterpillar’s Post-
`
`Hearing Reply Brief filed in Certain Road Milling Machines and Components Thereof, Inv. No.
`
`337-TA-1067 (U.S.I.T.C.), dated May 23, 2018, and was produced by Caterpillar with a starting
`
`Bates label CAT-770_085596.
`
`88.
`
`Attached hereto as Exhibit 89 is a true and correct excerpt of the Final Written
`
`Decision issued by the Patent Trial and Appeal Board of the inter partes review of U.S. Patent
`
`No. 8,308,395 in Caterpillar Inc. v. Wirtgen America, Inc., Case IPR2018-01091 (P.T.A.B.),
`
`Paper 49, entered November 27, 2019, and was produced by Caterpillar with a starting Bates
`
`label CAT-770_078082.
`
`89.
`
`Attached hereto as Exhibit 90 is a true and correct excerpt of Caterpillar’s
`
`Posthearing Brief filed in Certain Road Milling Machines and Components Thereof, Inv. No.
`
`337-TA-1067 (U.S.I.T.C.), dated May 11, 2018, and was produced by Caterpillar with a starting
`
`Bates label CAT-770_079890.
`
`13
`
`

`

`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 14 of 15 PageID #: 16783
`
`90.
`
`Attached hereto as Exhibit 91 is a true and correct excerpt of Appendix E to the
`
`Joint Opening Expert Report of Joseph Rakow, Ph.D., P.E., F.A.S.M.E. and Adam Sorini, Ph.D.,
`
`dated May 19, 2023.
`
`91.
`
`Attached hereto as Exhibit 92 is a true and correct excerpt of the Rebuttal Expert
`
`Report of Dr. Christopher Rahn, dated June 16, 2023.
`
`92.
`
`Attached hereto as Exhibit 93 is a true and correct excerpt of a hearing transcript
`
`of proceedings before Attorney-Advisors Jessica Wu and Branch Chief Dax Terrill in Certain
`
`Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.), on April
`
`21, 2021, that was produced by Caterpillar with a starting Bates label CAT-770_090593.
`
`93.
`
`Attached hereto as Exhibit 94 is a true and correct excerpt of Caterpillar’s
`
`Operation and Maintenance Manual for the PM310, PM312, and PM313 Cold Planer, bearing
`
`publication number M0071994-08 and publication date of July 2021, that was produced by
`
`Caterpillar with a starting Bates label CAT-770_002046.
`
` I
`
` declare under penalty of perjury under the laws of the United States that the foregoing is
`
`true and correct.
`
`
`
`Executed this 5th day of October 2023, at Washington, D.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Joseph Kim
`Joseph H. Kim
`
`
`
`
`
`
`
`
`
`
`14
`
`

`

`Case 1:17-cv-00770-JDW Document 220 Filed 10/05/23 Page 15 of 15 PageID #: 16784
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Adam W. Poff, Esquire, hereby certify that on October 5, 2023, I caused the foregoing
`
`document to be served by email upon the following counsel:
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas
`40th Floor
`New York, NY 10019
`lyen@wsgr.com
`
`caterpillar@wsgr.com
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/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
`
`Attorneys for Plaintiff
`
`
`

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