Case 1:17-cv-00770-JDW Document 221-9 Filed 10/05/23 Page 1 of 16 PageID #: 16967
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`Exhibit 9
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`Case 1:17-cv-00770-JDW Document 221-9 Filed 10/05/23 Page 2 of 16 PageID #: 16968
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v. )
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`CATERPILLAR INC.,
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`Defendant.
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`________________________________
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`C.A. No. 17-770-JDW
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`REBUTTAL EXPERT REPORT OF RICHARD W. KLOPP, Ph.D., P.E., F.A.S.M.E.
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`2111403.000 – 8505
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`Elevation plus Cross Slope, and Cross Slope.53 Elevation guidance allows the operator to set a
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`constant machine height that the machine is to maintain, Elevation plus Elevation guidance allows
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`the operator to set the desired height of both the left and right sides of the machine, Elevation plus
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`Cross Slope allows the operator to set the desired height of one side of the machine as well as the
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`left-to-right cross slope angle of the machine, and Cross Slope guidance allows the operator to set
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`the left-to-right cross slope angle of the machine.54
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`(7)
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`Leg sensors
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`The legs of the 01A build are equipped with position sensors located within the
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`hydraulic cylinders used to extend and retract the legs, thereby adjusting machine height.55 Figure
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`7 shows a cross-section of one of the hydraulic piston cylinder units with the position sensor
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`identified.
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`53 CAT_770_040200, pp. 13-14/72.
`54 CAT_770_040200, pp. 13-14/72.
`55 Deposition of Eric Engelmann, taken March 16, 2023, p. 28:6-7.
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`Figure 7. Example of one of the hydraulic cylinders used to adjust machine height (left). Cross-
`section of one of the hydraulic cylinders with the position sensor identified (right). 56,57
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`(8)
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`Side plate sensors
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`The relative position of the side plates of the PM620 01A with respect to the
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`machine frame is established using hydraulic cylinders.58 The side plate hydraulic cylinders are
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`equipped with position sensors to measure the distance of the side plates relative to the machine
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`frame.59 The side plate hydraulic cylinders and a cross section of one of the hydraulic cylinders
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`56 CAT-770_004719, p. 559/894.
`57 CAT-770_004719, p. 570/894.
`58 CAT-770_004719, p. 546/894.
`59 CAT_00037701, p. 5/24.
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`Case 1:17-cv-00770-JDW Document 221-9 Filed 10/05/23 Page 5 of 16 PageID #: 16971
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`5.
`Non-Infringement
` Claims 11 and 15 of the ’641 Patent are method claims. I understand that to show
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`infringement, Dr. Meyer had to show performance of every step in the claimed methods, and it is
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`my opinion that he has not done so. Dr. Meyer opines that the Accused Products perform all of the
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`steps of claim 11 of the ’641 patent.356 For the reasons discussed below, I disagree. The Accused
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`Products do not perform at least claim steps [11.4] and [11.5]. Dr. Meyer also opines that the
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`Accused Products perform all steps of claim 15 of the ’641 patent.357 For the reasons discussed
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`below, I disagree. The Accused Products do not perform at least claim step [15.2].
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`a)
`In that a Distance is Monitored Between the Milling Drum
`and the Ground – Step 11.4
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` Dr. Meyer has not demonstrated that the Accused Products perform the claim step
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`[11.4]: “in that a distance is monitored between the rotating, raised milling drum (12) and the
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`ground surface (2) or an obstacle located in front of the milling (12) when seen in the direction of
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`travel.”358 As discussed in ¶180, Dr. Meyer only cites to a side plate status of “lowered” or “not
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`lowered,” and not a distance,359 and therefore has not shown that the Accused Products practice
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`element [11.4] of ’641 Patent claim 11. Based on my inspections and review of Operation and
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`Maintenance Manuals for the “Cat Grade and Slope System,”360 I am aware that the Accused
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`Products’ controls may become aware of the height of the bottom of the drum relative to the ground
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`surface via operator intervention for purposes of grade and slope control.361 I observed the PM622
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`operator lower the rotating drum until it just touched (“scratched”) the ground and then “zero out”
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`356 Meyer Initial Report, ¶¶90-114.
`357 Meyer Initial Report, ¶¶117, 122, 158, 164, Appendix D at 49-50.
`358 ’641 Patent claim 11.
`359 Meyer Initial Report, ¶¶26, 70, 108, 114, 168, Appendix D at 44.
`360 See, e.g., CAT-770_022781 at -2822-2823, -2839-2840, -2848-2850.
`361 See, e.g., CAT-770_001580 at -1662,
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`or “bench”362 the grade control. At this point, the grade and slope control system became aware of
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`the distance between the drum and ground surface via ultrasonic sensors or side plate position
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`sensors. However, those values were not used for controlling reverse travel, nor were they
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`available to be used until the operator performed the “zeroing” step.
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`Instead, in the Accused Products (that is, before the software update reflected in
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`Table 2), reverse travel while the rotor is running was controlled by the distance between the
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`bottom edges of the side plates or moldboard and the frame, such that, if the distance decreases
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`during reverse travel for any reason, the rotor is shut off.363 This implies that, if a side plate or the
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`moldboard has been pushed up by the ground while traveling in reverse, the rotor will shut off, as
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`described in Caterpillar's Systems Operation Testing and Adjusting Manual for the PM620,
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`PM622, PM820, PM822, and PM825 cold planers,364 and the PM310, PM312, and PM313 cold
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`planers.365
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`I am aware that one reason the drum could become exposed is that the ground could
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`push the moldboard up relative to the frame and change the limit switch state, and Caterpillar’s
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`2015 PM600 Machine Software Requirements document even describes the intent “to detect a
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`condition where the rotor could come in contact with a surface when the machine is travelling in
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`reverse.”366 The same intent is described for the PM300 series machines in the Systems Operation
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`Testing and Adjusting - PM310, PM312, PM313 Cold Planer Machine Systems manual.367
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`Detecting the contact condition is not the same as monitoring the distance.
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`362 See, e.g., CAT-770_022781 at -2822-2823, -2839-2840, -2848-2850.
`363 CAT-770_014810 at -14887.
`364 CAT-770_001580 at -1655, -1662.
`365 CAT-770_021849 at -1920, -1926.
`366 CAT_00010642 at p. 365.
`367 CAT-770_021849 at -1926.
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`b)
`The Milling Drum is Uncoupled... When Detecting that
`the Deviation Falls Below a Pre-Determined Distance – Step 11.5
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`[11.4]:
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` Claim 11 of the ’641 Patent requires a method characterized according to step
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`in that a distance is monitored between the rotating, raised milling drum (12) and
`the ground surface…, and
`and step [11.5]:
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`in that the milling drum (12) is uncoupled from the drive engine (6), ... when
`detecting that the deviation falls below a pre-determined distance between the
`milling drum (12) and the ground surface (2).
` Even if, arguendo, per step [11.4] the distance is monitored between the rotating,
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`raised milling drum and the ground surface when traveling in reverse, Dr. Meyer has not shown
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`claim step [11.5] that the deviation (change, difference, or departure) 368 in the distance triggers
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`rotor shutoff. Dr. Meyer is not able to show this, because a PHOSITA would see that it makes no
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`sense to compare a distance deviation to a predetermined distance in the context of avoiding drum
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`contact with the ground.
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` To illustrate the conundrum, consider the possibility that the predetermined
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`distance is 2.0 inches above the ground, such that lowering the drum closer than 2.0 inches to the
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`ground during reverse travel is considered unsafe. If the drum is 10.0 inches above the ground and
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`the deviation is -2.5 inches, the drum is now 7.5 inches above the ground and the rotor should be
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`able to keep rotating. However, the deviation of -2.5 is less than (falls below) the predetermined
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`distance of 2.0 (-2.5 < 2.0), and, according the ’641 Patent claim 11, the rotor should shut off. The
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`Accused Products do not shut off the rotor when moving from 10.0 to 7.5 inches above the ground
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`and traveling in reverse. According to the logic underlying ’641 Patent claim 11, any downward
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`368 D.I. 168.
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`deviation should trigger rotor shutoff because a negative number is always less than (falls below)
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`a positive number. Thus, under the interpretation that a downward deviation is a negative number,
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`the Accused Products do not “[detect] that the deviation falls below a pre-determined distance
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`between the milling drum (12) and the ground surface (2).”
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` Even if ’641 Patent claim 11 is construed such that a downward movement is a
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`positive number, the conundrum associated with comparing differences and net values remains. If
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`the drum is 10.0 inches above the ground and the deviation is 1.5 inches, the drum is now 8.5
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`inches above the ground and the rotor should be able to keep rotating. However, according to ’641
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`Patent claim 11, the 1.5-inch deviation is less than (falls below) the 2.0-inch predetermined
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`distance (1.5 < 2.0), and the rotor should shut off. Thus, under the interpretation that a downward
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`deviation is a positive number, the Accused Products do not “[detect] that the deviation falls below
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`a pre-determined distance between the milling drum (12) and the ground surface (2).” The Accused
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`Products do not shut off the rotor when moving from 10.0 to 8.5 inches above the ground and
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`traveling in reverse.
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` Mr. Engelmann provided a witness statement and video exhibits in the ITC 1067
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`investigation further evidencing that the Accused Products do not practice step 11.5 and that they
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`instead practice a “drum exposure” methodology to control the drum rotation during reverse
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`travel.369 As discussed above,370 this methodology does not monitor a distance between the rotating
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`drum and the ground, nor does it uncouple the drive engine and the drum when detecting that “the
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`deviation” falls below a pre-determined distance between the drum and the ground. Mr.
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`369 RX-0993.C.0007-.0010 (Engelmann Rebuttal W.S., Q25-Q42).
`370 See ¶56.
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`Engelmann confirmed that the drum exposure methodology applied across the PM300, PM600,
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`and PM800 series machines.371
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`Q35. Do these videos show accurately how the drum exposure concept
`functions on the PM300, PM600 and PM800 Series machines?
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`A: Yes, they do. These videos show several general scenarios that
`illustrate Caterpillar’s drum exposure concept.
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` Dr. Meyer has not recognized nor considered the consequences of the conundrum
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`between a deviation and a net value that exists in ’641 Patent claim 11. Thus, he has not shown
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`that ’641 Patent claim 11 or its dependent claims 15, 17, and 18 are infringed.
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`c)
`The Drum is Raised by a Pre-determined Amount Larger
`than a Minimum Distance – Step 15.1
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` Dr. Meyer opines that the Accused Products perform all of the steps recited in claim
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`15 of the ’641 patent.372 As an initial matter, for the reasons discussed above and incorporated here
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`by reference, the Accused Products do not perform all of the steps recited in claim 15 for the same
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`reasons the Accused Products do not perform all of the steps recited in claim 11, namely steps 11.4
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`and 11.5.373 Additionally, for the reasons discussed below, I disagree with Dr. Meyer that the
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`Accused Products perform all of the steps recited in claim 15 of the ’641 patent.
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` Claim 15 of the ’641 Patent adds limitations to claim 11 but does not cure the
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`conundrum associated with comparing deviations and net values. The method according to step
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`15.1 “is characterized in that the milling drum is raised by a pre-determined amount that is larger
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`than a minimum distance between the milling drum (12) and the ground surface (2).” Dr. Meyer
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`has not identified this predetermined raise amount, nor shown that the drum is raised by it. Based
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`371 RX-0993.C.0008 (Engelmann Rebuttal W.S., Q35).
`372 Meyer Initial Report, ¶¶ 117, 122, 158, 164.
`373 Supra ¶¶182-191.
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`on my inspections and video reviews,374 the operator typically would raise the Accused Products
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`by a random amount that is not predetermined.375 Dr. Meyer also has not identified the claimed
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`minimum distance nor how it is maintained.
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` Dr. Meyer has also failed to notice a similar conundrum associated with comparing
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`changes with net values that occurs in step 15.1 in performing the method step characterized in
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`that “the milling drum is raised by a pre-determined amount.” Aside from the fact that there is no
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`evidence the amount is predetermined in the Accused Products, a PHOSITA would understand
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`raising by an amount376 to constitute an upward change, deviation, or departure from an initial
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`position. The conundrum arises because the initial position could be anything. Step 15.1 compares
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`the raise amount to “a minimum distance between the milling drum and the ground surface.” Step
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`15.1 requires that the raise amount be larger than the minimum distance. A PHOSITA would see
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`this method step as pointless at best due to comparing changes with net values. For example, say
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`the drum is 3.0 inches above the ground, the minimum distance is 2.0 inches, and the
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`predetermined raise amount is 2.5 inches, which is, of course, larger than the minimum distance
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`(2.5 > 2.0) The drum is now 5.5 inches above the ground after this step – quid tum. In general, the
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`initial position is undisclosed and unclaimed, so the final position is indeterminate even if the raise
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`amount is known and predetermined.
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` Mr. Engelmann’s ITC 1067 witness statement and exhibits describe how the
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`Caterpillar reverse travel shutoff feature across the PM300, PM600, and PM800 series machines
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`is based on a rotor exposure methodology, that does not involve raising the drum by a
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`374 See ¶¶89-91 and videos cited therein.
`375 See ¶¶91-91 and videos cited therein.
`376 The situation would be entirely different if the claim said, “raised to a predetermined distance,” but that is not
`what the claim says.
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`predetermined distance377 (to the extent that comparing a “raised by” amount with a minimum
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`distance even makes sense to a PHOSITA, as discussed in the preceding paragraph). Instead, the
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`reverse travel shutoff in the PM300, PM600, and PM800 series machines is triggered based on
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`drum exposure independent of drum distance to the ground.
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`Q26. Can you describe generally how this feature works?
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`A: The fundamental goal of the reverse travel shutoff feature is to make
`sure that the rotor is not exposed when the machine is backing up and the
`rotor is operating. Under this design, we want a rotor shutoff to occur at
`any point when the drum becomes exposed during reverse travel,
`regardless of whether the drum and drum enclosure are high above the
`ground or near and about to contact the ground. To achieve this goal, we
`use a control system with sensors that ensure that the moldboard and side
`plates are below the bottom surface of the rotor any time the machine is
`in reverse with the rotor drive clutch engaged. Essentially, the sensors
`are monitoring the position of the side plates and moldboard relative to
`an imaginary plane tangent to the bottom of the rotor. Any time any one
`of the side plates or moldboard is raised above that plane for more than
`0.5 seconds while the machine is in reverse with the rotor engaged, the
`control system sends a signal to shut the drum off―regardless of where
`the drum is positioned relative to the ground at that time.
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`Q27. What is measured by the sensors you just mentioned?
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`A: The sensors measure the positions of the side plates and the
`moldboard relative to the machine frame.
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`Q28. Does this feature measure the distance between the drum and the
`ground?
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`A: No, the reverse travel shutoff feature has nothing to do with the
`distance between the drum and the ground. Any time any one of the side
`plates or moldboard is raised above the bottom of the drum for more than
`0.5 seconds while the machine is in reverse with the rotor engaged, the
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`377 RX-0993.C.0007-.0008 (Engelmann Rebuttal W.S., Q25-Q29).
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`control system sends a signal to shut the drum off. This can occur at any
`distance between the drum and the ground.
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`Q29. Why is Caterpillar’s reverse travel shutoff feature designed to be
`able to shut off the rotor at any distance to the ground?
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`A: Because our design is a rotor exposure design, not a distance-to-the
`ground design. By preventing the rotor from being exposed below the
`side plates or rear door during reverse travel regardless of the distance to
`the ground, our system prevents injuries that potentially could occur
`even when the rotor is raised high above the ground. That is why our
`reverse travel shutoff feature does not measure or take into consideration
`the distance between the drum and the ground—that distance it is not
`relevant to the decision of whether to shut off the drum.
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` Dr. Meyer has presented no evidence that an operator raised an Accused Product
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`by a predetermined amount as required by step 15.1. Dr. Meyer also has not shown that the
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`Accused Products execute the missing step that would require the machine to drop from the
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`whatever height it was at after the “raised by a pre-determined amount” step to the minimum height
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`to be maintained during reverse travel, as required by step 15.2.
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`d)
`A Sensing Device Measuring Takes a Lower Limit
`Position Which Corresponds to a Pre-determined Distance or
`Minimum Distance – Step 15.2
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` Dr. Meyer fails to identify the “sensing device” required of step 15.2. He makes
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`oblique reference to the moldboard in relation to step 15.2 in his claim chart, stating, “The operator
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`may raise or lower the moldboard by pressing a button, thereby setting a predetermined distance
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`between the raised milling drum and the ground surface.”378 Dr. Meyer does not expressly state
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`that the moldboard is the sensing device required to practice step 15.2.
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`In addition, Dr. Meyer has not shown that “a sensing device measuring towards the
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`ground surface (2) takes a lower limit position which corresponds to a pre-determined distance or
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`to a minimum distance to be maintained,” as required by step 15.2. Based on my inspection
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`378 Meyer Initial Report, Appendix D at 50.
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`observations,379 an operator can raise or lower the moldboard to any position between the fully
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`extended and the fully raised position (unless it hits the ground while being extended), and I fail
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`to see how the choice of stopping point is “predetermined.” Dr. Meyer has not explained.
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` Dr. Meyer has not identified the “lower limit position” at all. With respect to the
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`side plates or moldboard, the “lower limit position” could mean the fully lowered position relative
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`to the frame, but this has nothing to do with a minimum distance to be maintained between the
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`drum and the ground, because the side plates and moldboard can be fully lowered to the lower
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`limit position while the machine is fully raised and the drum is many inches off the ground.
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` Dr. Meyer has not identified “pre-determined distance or … a minimum distance
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`to be maintained between the milling drum and the ground surface” as required in step 15.2. If
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`such a distance existed, I would have expected Dr. Meyer to state it with a specific value, based
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`on testing or analysis.
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` Mr. Engelmann’s ITC 1067 witness statement and exhibits describe how the
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`Caterpillar reverse travel shutoff feature across the PM300, PM600, and PM800 series machines
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`is based on a rotor exposure methodology, that does not involve a sensing device measuring
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`towards the ground surface taking a lower limit position corresponding to a pre-determined
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`distance or to a minimum distance to be maintained between the drum and the ground.380 Instead,
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`as Mr. Engelmann testified in his ITC 1067 witness statement that the reverse travel shutoff in the
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`PM300, PM600, and PM800 series machines is triggered based on drum exposure independent of
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`drum distance to the ground.381 Mr. Engelmann’s ITC testimony is consistent with his District
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`Court testimony on the same topic.382
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`379 See ¶¶89-91 and videos cited therein.
`380 RX-0993.C.0007-.0008 (Engelmann Rebuttal W.S., Q25-Q29).
`381 Id.
`382 Deposition of Eric Engelmann, taken March 16, 2023, at 146:9-148:14.
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` As discussed above, Dr. Meyer’s analysis of ’641 Patent claims 11, 15, 17, and 18
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`under the DOE is highly superficial and not performed in a meaningful way on an element-by-
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`element basis. His analysis for each element comprises,383
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`To the extent that any differences may exist between the Accused … Milling
`machines and the features disclosed in claim element X, a person of ordinary skill
`in the art would have understood these differences to be insubstantial. Indeed, to
`the extent that any such differences exist, it is nonetheless my opinion that the
`Accused … Milling Machines
`include a substantially similar damage
`avoidance/safety feature that is intended to perform substantially the same
`function, in substantially the same way, to achieve substantially the same result as
`claim element X. Thus, it is my opinion that claim element X is also met under the
`doctrine of equivalents.
` None of these analyses explain the function, way, or result, nor explain what the
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`differences may be, much less why they should be deemed insubstantial.
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` Even if Wirtgen America’s claim constructions underlying their infringement
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`contentions prevail (which is contradicted by the above analysis), I have shown in the Klopp
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`Opening Report that the Caterpillar PM-465 prior art cold planer with its kickback ski invalidates
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`’641 Patent claims 1 and 14 because it anticipates.384 The Accused Products cannot infringe an
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`invalid patent.
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` Therefore, it is my opinion that Dr. Meyer has failed to show that the Accused
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`Products, when operated, practice the methods in the Asserted Claims of the ’641 Patent.
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`Additionally, Dr. Meyer and Wirtgen America apparently already accept that “02B build” products
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`after a software update do not infringe the Asserted Claims of the ’641 Patent, but their acceptance
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`must be based on an incorrect reading of the claims.385 If the claims are read properly, which is to
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`383 Meyer Initial Report, Appendix D.
`384 Klopp Opening Report, Section IX.A.
`385 Meyer Initial Report, ¶5.
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`realize that they are comparing deviations with net values, they do not infringe, nor do any of the
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`builds listed in Table 2.
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`C.
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`Seth Initial Report
` The Seth Initial Report presents opinions relating to Wirtgen America’s alleged
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`damages. Damages are outside the scope of my reports. However, Dr. Seth relies on engineering
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`opinions found in the Rahn Initial Report and the Meyer Initial Report. Because I find the Rahn
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`and Meyer opinions flawed, it is my opinion that Dr. Seth’s opinions that rely on them are also
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`flawed.
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`1.
`RE268 Vibration Mounting
` Dr. Seth clearly is unaware of the ubiquity of engine vibration mounts in the prior
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`art, and, given their ubiquity and her reliance on engineering expertise, she should have been made
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`aware. Dr. Seth writes, “[I]t is reasonable to infer that Wirtgen’s asserted vibration mounting
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`feature is another important determinant of consumers’ ultimate purchasing decision.”386 I
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`disagree. Even Dr. Rahn admits that engine vibration mounts were prevalent in the prior art,
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`stating, “the [RE]268 [P]atent’s specification refers to and describes mounting supports and
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`attachments that skilled artisans would have understood were commonly available and routinely
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`used, such as those described in Godbersen’s and Kingsley’s patents.”387 Dr. Seth implies that cold
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`planer consumers had the option to buy (and presumably pay less for) a machine in which the
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`engine was not mounted on isolators. I am unaware of the existence of any such cold planer that
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`would offer consumers the option, nor has Dr. Seth pointed to such a machine. It is reasonable to
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`assume that customers would avoid a cold planer that did not have engine vibration mounts, but
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`386 Seth Initial Report, ¶100.
`387 Rahn Initial Report, ¶23.
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`reliance on Drs. Rahn’s and Meyer’s engineering opinions to support economic opinions is fatally
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`flawed.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on June 16, 2023 at Menlo Park, California
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`Richard W. Klopp, Ph.D., P.E., F.A.S.M.E.
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`2111403.000 – 8505
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