Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 1 of 57 PageID #: 17185
`
`
`
`
`
`
`
`Exhibit 24
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 24
`
`
`
`
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 2 of 57 PageID #: 17186
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim-Defendant,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`) C.A. No. 1:17-cv-00770-JDW
`)
`)
`)
`)
`
`INITIAL EXPERT REPORT OF DR. JOHN MEYER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CATERPILLAR INC.
`
`
`v.
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 3 of 57 PageID #: 17187
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`Appendix D, I will refer only to the PM620 machines, with the understanding
`
`that my analysis of the PM620 machine applies with equal force to the PM622,
`
`PM820, PM822, and PM825 machines.
`
`88. While I believe that the infringement claim charts attached as
`
`Appendix D fully explain and illustrate how the PM620 machines perform
`
`each and every step recited in the Asserted Claims of the ’641 patent, I
`
`understand that Caterpillar has argued that at least some of the claimed steps—
`
`claim elements 11.c, 11.e, 11.f, 15.a, 15.b, 17, 18, 19.a, 19.b—are not
`
`performed by these machines. See Caterpillar’s Resp. to Wirtgen America’s
`
`First Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. It is
`
`my opinion that Caterpillar’s arguments are erroneous. Therefore, the
`
`following sections address the specific claim steps that Caterpillar alleges to
`
`not be performed by the PM620 machines, and explain the flaws in
`
`Caterpillar’s analysis.
`
`89. My infringement opinions for all remaining claim limitations—
`
`i.e., steps for which Caterpillar does not specifically dispute—are included in
`
`Appendix D.
`
`
`
`Claim 11[p]. The PM600 Series and PM800 Series Road
`Milling Machines Perform a: “[m]ethod for working ground
`surfaces (2) with a construction machine (1)”
`90. As shown in the image below, the Accused Large Milling
`
`38
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 4 of 57 PageID #: 17188
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`Machines are cold planers—devices used to mill road surfaces during road
`
`construction:
`
`
`
`CAT-770_041484 (July 2016 PM620 & PM622 Specalog) at 1505; see also WA-
`
`1717257 (PM622 Inspection Video).
`
`91. Caterpillar does not dispute that the Accused Large Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix D, the Accused Large Milling
`
`Machines perform a: “[m]ethod for working ground surfaces (2) with a
`
`construction machine (1)” as recited in element 11[p].
`
`
`
`Claim 11[a]. The PM600 Series and PM800 Series Road
`Milling Machines Practice A Method “that is automotive by
`means of traveling devices (8)”
`92. Caterpillar does not dispute that the Accused Large Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`39
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 5 of 57 PageID #: 17189
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix D, the Accused Large Milling
`
`Machines practice a method “that is automotive by mean of traveling devices
`
`(8)” as recited in element 11[a].
`
`
`
`Claim 11[b]. The PM600 Series and PM800 Series Road
`Milling Machines Practice a Method: “in which a milling
`drum (12) supported in a machine frame (4) is driven by a
`drive engine (6)”
`93. Caterpillar does not dispute that the Accused Large Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix D, the Accused Large Milling
`
`Machines practice a method “in which a milling drum (12) supported in a
`
`machine frame (4) is driven by a drive engine (6)” as recited in element 11[b].
`
`
`
`Claim 11[c]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “where the
`milling drum (12) is moved into a raised position when it is
`not in milling mode”
`94. Caterpillar claims that the Accused Large Milling Machines do
`
`not perform this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`40
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 6 of 57 PageID #: 17190
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`95.
`
`I understand that the milling drum of the Accused Large Milling
`
`Machines is fixed to the machine frame. CAT_00056536 (Apr. 2016 PM620
`
`Parts Manual) at p. 479; see also CAT-770_004719 (Jan. 2017 PM620 01A
`
`Parts Manual) at 5198; CAT-770_005613 (Sep. 2020 PM622 01A Parts
`
`Manual); CAT-770_007018 (Feb. 2020 PM820 Parts Manual) at 7492; CAT-
`
`770_016399 (Oct. 2020 PM622 02B Parts Manual) at 6953; CAT-770_009018
`
`(PM825 01A Parts Manual) at 9383.
`
`96. Because the milling drum of the Accused Large Milling Machines
`
`is fixed to the frame, it is moved into a raised position by extending the lifting
`
`columns, or leg posts, to lift the frame and the milling drum away from milled
`
`ground surface, i.e., when not in milling mode.
`
`41
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 7 of 57 PageID #: 17191
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems, Operating, Testing &
`
`Adjusting Manual) at 7188; CAT0004149 (Aug. 2016 PM620 & PM622 Technical
`
`Presentation) at 4359, 4389; see also CAT-770_014810 (May 2021 PM6XX &
`
`PM8XX Systems Operation Testing and Adjusting Manual) at 4844.
`
`97. Based on Caterpillar’s technical materials, at least the “PRE-
`
`SCRATCH,” “PRE-SERVICE,” and “SERVICE HEIGHT” positions would
`
`constitute a raised position where the machine is not in milling mode. See, e.g.,
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems, Operating, Testing &
`
`Adjusting Manual) at 7188.
`
`
`
`Claim 11[d]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “in that, the
`milling drum (12) remains coupled with the drive engine (6)
`
`42
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 8 of 57 PageID #: 17192
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`when in raised position and with a direction of travel in which
`the rotating direction of the milling drum (12) corresponds to
`the rotating direction of the traveling devices (8)”
`98. Caterpillar does not dispute that the Accused Large Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix D, the Large Milling Machines
`
`perform the method step “in that, the milling drum (12) remains coupled with
`
`the drive engine (6) when in raised position and with a direction of travel in
`
`which the rotating direction of the milling drum (12) corresponds to the
`
`rotating direction of the traveling devices (8)” as recited in element 11[d].
`
`
`
`Claim 11[e]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “in that a
`distance is monitored between the rotating, raised milling
`drum (12) and the ground surface (2) or an obstacle located
`in front of the milling (12) when seen in the direction of
`travel”
`99. Caterpillar claims that the Accused Large Milling Machines do
`
`not perform this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`43
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 9 of 57 PageID #: 17193
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`interrogatory responses.
`
`100. The Accused Large Milling Machines monitor a distance between
`
`the drum and the ground (measured either directly or indirectly). Specifically,
`
`the Accused Large Milling Machines monitor the positions of the side plates
`
`and moldboard relative to the lowest plane of the milling drum. For example,
`
`Caterpillar’s technical documents describe that “[t]he moldboard position is
`
`determined by switches . . . monitored by the steering ECM.”
`
`
`
`
`
`44
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 10 of 57 PageID #: 17194
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems, Operating, Testing &
`
`Adjusting Manual) at 7175-76; see also id. at 7225, 7229, 7335; CAT0004149
`
`(Aug. 2016 PM620 & PM622 Technical Presentation) at 4359-4360, 4497, 4508-
`
`4509; CAT-770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating,
`
`Testing & Adjusting Manual) at 1597-98; Engelmann Dep. 148:6-12, Mar. 16,
`
`2023 (“The PM600 and 800 used switches that were placed at a certain point on
`
`the rear door . . . to detect when the moldboard was not lowered.”).
`
`101. This monitoring is performed by the “Steering ECM” and the
`
`“Transmission ECM.” CAT0007161 (Oct. 2016 PM620 & PM622 Systems
`
`Operation Testing & Adjusting) at 7225, 7234; CAT0004149 (Aug. 2016
`
`PM620 & PM622 Technical Presentation) at 4508-09; see also CAT-
`
`770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating, Testing &
`
`Adjusting Manual) at 1586, 1589, 1596-97; WA-1717207; WA-1717120.
`
`
`
`45
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 11 of 57 PageID #: 17195
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4360; see
`
`also CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical Presentation) at
`
`237.
`
`
`
`46
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 12 of 57 PageID #: 17196
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`Adjusting) at 7175-76; see also CAT-770_001580 (Feb. 2021 PM6XX & PM8XX
`
`Systems, Operating, Testing & Adjusting Manual) at 1597-98; Engelmann Dep.
`
`74:15-75:2, 337-TA-1067, Jan. 12, 2018 (“The switch and the plate are placed in a
`
`47
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 13 of 57 PageID #: 17197
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`location that coincides with the bottom of the rotor surface.”).
`
`102. Caterpillar’s machine software requirement documentation
`
`depicts that the logic of the Accused Large Milling Machines is to measure the
`
`position of the rotor drum relative to a set threshold as depicted below.
`
`
`
`CAT0068812 (July 2015 PM600 Machine Software Requirements) at 9158; see
`
`also CAT_00057252 (LPM Moldboard Position Control 1.4); CAT-770_001390
`
`(Tier 4f Cold Planer – Rotor On Off Control); O’Donnell Dep. 246:3-15, 337-TA-
`
`1067, Jan. 5, 2018 (explaining that “the switches were designed to be placed in
`
`strategic locations on the machine so that it could detect the mold board, some of
`
`the mold board positions” and was set up “[s]o the bottom of the mold board
`
`should be close to the same location as the bottom of the rotor teeth.”).
`
`103. The described moldboard switch arrangement was observed on a
`
`PM620 02A build machine, as shown in the photograph below. See also CAT-
`
`48
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 14 of 57 PageID #: 17198
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating, Testing &
`
`Adjusting Manual) at 1597; CAT-770_014810 (May 2021 PM6XX & PM8XX
`
`Systems Operation Testing and Adjusting Manual) at 4828.
`
`
`
`
`
`
`
`
`
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4359; see
`
`49
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 15 of 57 PageID #: 17199
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`also CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical Presentation) at p.
`
`236; Engelmann Dep. 27:12-28:6, Mar. 16, 2023 (“Q. And there were sensors in
`
`the lifting columns for the 01A build; correct? . . . A. The hydraulic cylinders did
`
`contain magnetostrictive sensors.”).
`
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4497; see
`
`also CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical Presentation) at p.
`
`378; Engelmann Dep. 28:8-22 (Mar. 16, 2023) (“Q. And each cylinder has a
`
`position sensor in it? A. Yes, each [side plate] cylinder has a sensor in it.”).
`
`
`
`50
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 16 of 57 PageID #: 17200
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`
`
`Adjusting) at 7228; see also CAT-770_001580 (Feb. 2021 PM6XX & PM8XX
`
`Systems, Operating, Testing & Adjusting Manual) at 1656; Engelmann Dep.
`
`75:12-76:5, 337-TA-1067, Jan. 12, 2018 (“Q. Okay. And whether the side plate is
`
`raised above that predetermined threshold depends upon – I’m sorry is detected by
`
`position sensors. Is that correct? A. We use position sensors on the side plates. Q.
`
`Okay. And those position sensors on the side plate are used in connection with this
`
`feature to determine whether the side plate is raised above a particular threshold?
`
`A. We use those values to compare to our threshold.”).
`
`51
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 17 of 57 PageID #: 17201
`
`
`
`
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`104. The photographs below show the side plate cylinders at the front
`
`and rear of the side plates and their associated side plate position sensors
`
`observed on a PM620 02A build machine. See also CAT-770_001580 (Feb.
`
`2021 PM6XX & PM8XX Systems, Operating, Testing & Adjusting Manual) at
`
`1610, 1654; CAT-770_014810 (May 2021 PM6XX & PM8XX Systems
`
`Operation Testing and Adjusting Manual) at 4845, 4887.
`
`
`
`
`105. Caterpillar’s automatic rotor disengagement feature operates by
`
`monitoring the side plate positions and the scraper blade (“moldboard”)
`
`position to determine when to disengage the rotor. As is implicit in
`
`Caterpillar’s description of the automatic rotor disengagement feature, the
`
`52
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 18 of 57 PageID #: 17202
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`milling drum in the Accused Large Milling Machines can remain coupled to
`
`the drive engine when the machine is raised and the direction of travel is in
`
`reverse (so that the rotating direction of the traveling devices corresponds to
`
`the rotating direction of the milling drum). CAT0007161 (Oct. 2016 PM620 &
`
`PM622 Systems Operation Testing & Adjusting) at 7235; CAT-770_001580
`
`(Feb. 2021 PM6XX & PM8XX Systems, Operating, Testing & Adjusting
`
`Manual) at 1662; CAT0004149 (Aug. 2016 PM620 & PM622 Technical
`
`Presentation) at 4508; CAT_00057357 (Mar. 2021 PM6XX & PM8XX
`
`Technical Presentation) at p. 389.
`
`106. For example, the document pictured below describes that “[a]n
`
`automatic rotor disengagement feature detects a condition where the rotor
`
`could come in contact with a surface while the machine is traveling in
`
`reverse.”
`
`
`
`
`
`53
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 19 of 57 PageID #: 17203
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`Adjusting) at 7225, 7234 (emphasis added); see also CAT-770_001580 (Feb. 2021
`
`PM6XX & PM8XX Systems, Operating, Testing & Adjusting Manual) at 1662;
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4508-09;
`
`CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical Presentation) at p. 389-
`
`390.
`
`
`
`Claim 11[f]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “the milling
`drum (12) is uncoupled from the drive engine (6), and/or the
`traveling devices (8) are uncoupled from the drive engine (6)
`and/or the machine frame (4) is raised and/or an alarm signal
`is generated when detecting that the deviation falls below a
`pre-determined distance between the milling drum (12) and
`the ground surface (2)”
`107. Caterpillar claims that the Accused Large Milling Machines do
`
`not practice this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`108. In addition to the features explained above, the Accused Large
`
`Milling Machines also uncouple the raised milling drum from the drive engine
`
`54
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 20 of 57 PageID #: 17204
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`upon sensing the raising of the scraper blade (“moldboard”) or side plates,
`
`which meets a certain threshold. This occurs when (1) the Accused Large
`
`Milling Machines are operating in reverse, (2) the rotor drive status is “on,”
`
`and (3) “[t]he moldboard status changes to ‘Not Lowered’ or any side plate is
`
`raised above a threshold.” CAT0007161 (Oct. 2016 PM620 & PM622 Systems
`
`Operation Testing & Adjusting) at 7234; CAT-770_001580 (Feb. 2021
`
`PM6XX & PM8XX Systems, Operating, Testing & Adjusting Manual) at
`
`1662; CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at
`
`4508-09; CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical
`
`Presentation) at p. 389-390; Engelmann Dep. 64:13-65:14, 337-TA-1067, Jan.
`
`12, 2018 (“There’s a feature on the 620 where the rotor will disengage when
`
`traveling in reverse under certain conditions.”); Engelmann Dep. 26:12-17,
`
`Mar. 16, 2023 (Q. The 01A build had a feature that was referred to as the . . .
`
`automatic rotor disengagement feature? Do I have that correct? A. I believe
`
`you’re referring to what we would call reverse rotor shutoff.”). Thus, when the
`
`milling drum reaches a distance relative to the positions of the side plates and
`
`moldboard and the appropriate signals are generated by the sensors associated
`
`with the scraper blade and/or the side plates, the “automatic rotor
`
`disengagement feature” causes the rotor to disengage from the drive engine.
`
`55
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 21 of 57 PageID #: 17205
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`Adjusting) at 7234; see also CAT-770_014810 (May 2021 PM6XX & PM8XX
`
`Systems Operation Testing and Adjusting Manual) at 4894; CAT-770_001512
`
`(Mar. 2020 Tier 4f Cold Planer – Rotor On Off Control Software Documentation)
`
`at 1512-25; CAT-770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating,
`
`Testing & Adjusting Manual) at 1662; CAT_00057357 (Mar. 2021 PM6XX &
`
`PM8XX Technical Presentation) at p. 389.
`
`109. The “disengagement feature is activated” when certain parameters
`
`in relation to the moldboard are met as shown below in Caterpillar’s manual:
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`Adjusting) at 7234; see also CAT-770_014810 (May 2021 PM6XX & PM8XX
`
`
`
`56
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 22 of 57 PageID #: 17206
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`Systems Operation Testing and Adjusting Manual) at 4894; CAT-770_001512
`
`(Mar. 2020 Tier 4f Cold Planer – Rotor On Off Control Software Documentation)
`
`at 1512-25; CAT-770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating,
`
`Testing & Adjusting Manual) at 1662; CAT_00057357 (Mar. 2021 PM6XX &
`
`PM8XX Technical Presentation) at p. 389.
`
`110. Another example of a detected “event” is when the side plate
`
`reaches a certain threshold and “the rotor disengagement feature is activated,
`
`the machine is allowed to continue to travel in reverse.”
`
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems Operation Testing &
`
`Adjusting) at 7234; see also CAT-770_014810 (May 2021 PM6XX & PM8XX
`
`Systems Operation Testing and Adjusting Manual) at 4894; CAT-770_001512
`
`(Mar. 2020 Tier 4f Cold Planer – Rotor On Off Control Software Documentation)
`
`at 1512-25; CAT-770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating,
`
`Testing & Adjusting Manual) at 1662; CAT-770_001580 (Feb. 2021 PM6XX &
`
`PM8XX Systems, Operating, Testing & Adjusting Manual) at 1662;
`
`CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical Presentation) at p. 389.
`
`57
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 23 of 57 PageID #: 17207
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`CAT-770_001580 (Feb. 2021 PM6XX & PM8XX Systems, Operating, Testing &
`
`Adjusting Manual) at 1597; see also CAT-770_014810 (May 2021 PM6XX &
`
`PM8XX Systems Operation Testing and Adjusting Manual) at 14887.
`
`111. Caterpillar’s corporate witness explained that “we simply monitor
`
`the moldboard and side plates to be below a certain threshold point, and if
`
`they’re lower than that threshold, we allow the rotor to remain on, and if
`
`they’re above that threshold, we shut the rotor off . . . . That threshold point
`
`was selected based on the bottom or tangent plane created by the bottom of the
`
`rotor . . . . The purpose of the feature, from my perspective, is to detect a
`
`condition where the rotor may be exposed because the side plates or
`
`moldboard are raised above that lower surface.” Engelmann Dep. 69:1-71:10,
`
`337-TA-1067, Jan. 12, 2018; see also Engelmann Dep. 147:8-17, Mar. 16,
`
`2023 (“Q. And for Version 1, what were the conditions in which the reverse
`
`rotor shutoff feature would cause the rotor to disengage? A. The conditions
`
`that would cause the rotor to disengage were if the rotor was on, that was one
`
`of the conditions, if the machine was propelling in the reverse direction, and
`
`then it was looking if the side plates, if either side plate or the moldboard were
`
`58
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 24 of 57 PageID #: 17208
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`elevated above some threshold point.”).
`
`112. Thus, the side plates and moldboard serve as sensing devices that,
`
`through position-sensing cylinders and limit switches respectively, monitor the
`
`distance between the milling drum and the ground. When any of the side plates
`
`or moldboard is raised by the ground surface, i.e., there is a deviation between
`
`a pre-determined distance between the milling drum and the ground or a
`
`certain threshold in relation to the side plates and moldboard, it is sensed by
`
`the machine ECM, which then disengages the clutch and, consequently, the
`
`rotor.
`
`113. This is confirmed by a Caterpillar machine requirements
`
`document explaining that “[w]hen the rotor drive is on and the machine is
`
`travelling in reverse, the side plates and moldboard position shall be
`
`monitored. If any side plate cylinder or the moldboard are raised above the
`
`threshold, the rotor drive shall be disengaged.”
`
`
`
`
`
`59
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 25 of 57 PageID #: 17209
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`CAT0068812 (July 2015 PM600 Machine Software Requirements) at 9176
`
`(emphasis added); see also CAT_00057265 (LPM Rotor On Off Control 3.1) at
`
`57273; O’Donnell Dep. 250:16-252:8, 337-TA-1067, Jan. 5, 2018 (discussing the
`
`side plate thresholds necessary to disengage the rotor).
`
`114. This is also confirmed by a Caterpillar training document
`
`describing that “[t]he side plate raised threshold is based on the duty cycle of
`
`the position sensors. If the duty cycle of either left side plate sensor (9) and (1)
`
`is less than 78.9 percent, an event is detected. . . . When an even is detected . . .
`
`[t]he rotor drive status changes to ‘Disengaging’ and the normal
`
`disengagement sequence is initiated. When the rotor disengagement feature is
`
`activated, the machine is allowed to continue to travel in reverse.”
`
`60
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 26 of 57 PageID #: 17210
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4508-09;
`
`see also O’Donnell Dep. 275:9-279:9, 337-TA-1067, Jan. 5, 2018 (confirming the
`
`accuracy of the description in the training manual and that the same software
`
`applies to the PM600 series and PM800 series machines).
`
`
`
`Claim 17. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step “in accordance
`with claim 15, characterized in that a scraper blade (22) that
`is arranged behind the milling drum (12) when seen in the
`direction of travel is used as a sensing device”
`115. Caterpillar claims that Accused Large Milling Machines do not
`
`practice this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless, Caterpillar is incorrect for at
`
`61
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 27 of 57 PageID #: 17211
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`116. Claim 17 depends from Claim 15, “a method in accordance with
`
`claim 11, characterized in that the milling drum (12) is raised by a pre-
`
`determined amount that is larger than a minimum distance between the milling
`
`drum (12) and the ground surface (2), and in that a sensing device measuring
`
`towards the ground surface (2) takes a lower limit position which corresponds
`
`to a pre-determined distance or to a minimum distance to be maintained
`
`between the milling drum (12) and the ground surface (2).”
`
`117. The PM600 and PM800 series perform the method step recited in
`
`Claim 15. The operator of the Accused Large Milling Machines, by using a
`
`control panel, electronic switch, or a graphical user interface (“GUI”), raises
`
`the milling drum “by a predetermined amount that is larger than a minimum
`
`distance between the milling drum (12) and the ground surface (2), and in that
`
`a sensing device measuring towards the ground surface (2) takes a lower limit
`
`position which corresponds to a pre-determined distance or to a minimum
`
`distance to be maintained between the milling drum (12) and the ground
`
`surface (2)” for the reasons explained above regarding the corresponding
`
`feature in claim 11.
`
`62
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 28 of 57 PageID #: 17212
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`118. Additionally, as recited by claim 17, the PM620 performs the
`
`method step wherein “a scraper blade (22) that is arranged behind the milling
`
`drum (12) when seen in the direction of travel is used as a sensing device.”
`
`119. Again, as explained above regarding the monitoring device
`
`features of claim 11, the PM620 uses the moldboard as a sensing device to
`
`indirectly monitor a distance between the milling drum and the ground. A
`
`person of ordinary skill in the art would understand that a moldboard is also
`
`known as a scraper blade, and is located behind the milling drum in the
`
`direction of travel. WA-ITC_00458142; WA-ITC_00458701; WA-
`
`ITC_00458702; WA-ITC_00458706; WA-ITC_00458707; WA-
`
`ITC_00458708; WA-ITC_00458709; WA-ITC_00458710; WA-
`
`ITC_00458711; WA-ITC_00458723; WA-ITC_00458724; WA-
`
`ITC_00458725; WA-ITC_00458726; WA-ITC_00458727; WA-
`
`ITC_00458728; WA-ITC_00458730; WA-ITC_00458736; WA-
`
`ITC_00458737; WA-ITC_00458738; WA-ITC_00458739; WA-
`
`ITC_00458740; WA-ITC_00458741; WA-ITC_00458742.
`
`
`
`Claim 18. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “in accordance
`with claim 15, characterized in that a side plate (24) arranged
`at the side next to the milling drum (12) and/or a hood (18)
`enclosing the milling drum (12) is used as a sensing device”
`120. Caterpillar claims that the Accused Large Milling Machines do
`
`63
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 29 of 57 PageID #: 17213
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`not practice this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`121. Claim 18 depends from Claim 15, “a method in accordance with
`
`claim 11, characterized in that the milling drum (12) is raised by a pre-
`
`determined amount that is larger than a minimum distance between the milling
`
`drum (12) and the ground surface (2), and in that a sensing device measuring
`
`towards the ground surface (2) takes a lower limit position which corresponds
`
`to a pre-determined distance or to a minimum distance to be maintained
`
`between the milling drum (12) and the ground surface (2).”
`
`122. As already explained above, the PM600 and PM800 series
`
`perform the method step recited in Claim 15. The operator of the Accused
`
`Large Milling Machines, by using a control panel, electronic switch, or a
`
`graphical user interface (“GUI”), raises the milling drum “by a predetermined
`
`amount that is larger than a minimum distance between the milling drum (12)
`
`and the ground surface (2), and in that a sensing device measuring towards the
`
`64
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 30 of 57 PageID #: 17214
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`ground surface (2) takes a lower limit position which corresponds to a pre-
`
`determined distance or to a minimum distance to be maintained between the
`
`milling drum (12) and the ground surface (2)” for the reasons explained above
`
`regarding the corresponding feature in claim 11.
`
`123. Additionally, as recited by claim 18 and as explained in claim 11,
`
`the PM620 performs the method step wherein “a side plate (24) arranged at the
`
`side next to the milling drum (12) and/or a hood (18) enclosing the milling
`
`drum (12) is used as a sensing device.”
`
`124. In addition to the literal infringement outlined above, it is also my
`
`opinion that the Accused Products infringe the claims 11, 17, and 18 under the
`
`doctrine of equivalents.
`
`C. The PM300 Series Road Milling Machines Infringe the
`Asserted Claims of the ’641 Patent
`125. As discussed above, I understand that the PM312 machine is
`
`representative of the entire PM300 series (including the PM310 and PM313).
`
`See D.I. 186, April 12, 2023 Joint Stipulation Regarding Representative
`
`Accused Products. Therefore, for the purposes of my detailed infringement
`
`analysis below and the infringement claim chart attached as Appendix E, I will
`
`refer only to the PM312 machines, with the understanding that my analysis of
`
`the PM312 machine applies with equal force to the PM310, PM312, and
`
`PM313 machines.
`
`65
`
`
`
`Case 1:17-cv-00770-JDW Document 221-24 Filed 10/05/23 Page 31 of 57 PageID #: 17215
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`126
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
