Case 1:17-cv-00770-JDW Document 229-23 Filed 10/05/23 Page 1 of 45 PageID #: 23705
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`Exhibit 70
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`Case 1:17-cv-00770-JDW Document 229-23 Filed 10/05/23 Page 2 of 45 PageID #: 23706
`Case 1:17-cv-00770-JDW Document 229-23 Filed 10/05/23 Page 2 of 45 PagelD #: 23706
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA,INC.,
`
`Plaintiff,
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`Vv.
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`CATERPILLAR INC.,
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`Defendant.
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`C.A. No. 17-770-RGA-MPT
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`dede
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`REBUTTAL EXPERT REPORT OF PAUL BARTKOWSKI
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`

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`I.
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`INTRODUCTION
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`1.
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`I submit this Rebuttal Report (“Rebuttal Report”) in the above-identified action
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`on behalf of Caterpillar Inc. (“Caterpillar”) to provide the information required by Rule
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`26(a)(2)(B) of the Federal Rules of Civil Procedure.
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`2.
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`I have been asked by counsel for Caterpillar to provide my independent expert
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`opinionson subjects relevantto this lawsuit. My area oftechnical expertise includesthe practices
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`and procedures of the International Trade Commission (“ITC” or “Commission”’). My
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`background and experience are summarized in Section II below. My CVis provided as Appendix
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`A to this Rebuttal Report.
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`3.
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`Generally, counsel for Caterpillar has requested that I provide specialized
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`discussion and analysis regarding the ITC,its practices and procedures, and how thosepractices
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`and proceduresapply to the history of this current litigation.
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`4.
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`The opinions and comments formulated during this assessment are based on my
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`education, relevant experience and research, materials reviewed, and other observations and
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`information available at the time ofthe investigation.
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`II.
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`BACKGROUND, QUALIFICATIONS, AND PROFESSIONAL EXPERIENCE
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`5.
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`In general, my professional experience since approximately 2007 has focused on
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`patent litigation under 19 U.S.C. § 1337 (“Section 337”) at the International Trade Commission,
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`including its practices and procedures. My background, qualifications, and professional
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`experience are summarized below.
`
`A.
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`6.
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`Educational Background
`
`I received a Bachelor of Science degree in chemical engineering from Lafayette
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`College in 1999, where I graduated cum laude.
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`

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`7.
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`I received a Juris Doctorate degree from George Washington University in 2002,
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`where I graduated with honors.
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`B.
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`8.
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`Professional Background
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`In general, my practice focuses on Section 337 litigation before the International
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`Trade Commission. I am also a registered patent attorney with significant experience in patent
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`litigation in district courts and other venues.
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`9.
`
`I began mycareer, in 2002, at Fulbright & Jaworski, now Norton Rose Fulbright,
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`where mypractice focused on patentlitigation in district courts.
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`10.
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`Beginning in early 2007, I then served as an attorney in the Office of the General
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`Counsel at the U.S. International Trade Commission.
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`In that role, I provided legal analysis and
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`advice to the six Commissioners that comprise the Commission regarding whether to “review”
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`the decisions of Administrative Law Judges (“ALJ”), who, as discussed in more detail below,
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`render
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`“Initial Determinations”
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`that
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`can be
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`reviewed,
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`and modified,
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`reversed, or
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`affirmed/adopted, by the Commission. I also represented the Commission in multiple appeals of
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`Commission cases before the Court of Appeals for the Federal Circuit and participated in
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`Commission decision-making.
`
`11.
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`‘In early 2011, I joined the since-dissolved ITC boutique Adduci, Mastriani &
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`Schaumberg, where I focused my practice on patent litigation at the ITC andrelated matters. I
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`began my employmentat the firm as an associate, then was promotedto partner, and ultimately
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`made an equity partner.
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`12.
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`In January 2021, I left Adduci, Mastriani & Schaumberg and founded Bartkowski
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`PLLC.
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`13.|Over my nearly two decades of experience with Section 337 litigation, I have been
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`involved in many of the Commission’s high-profile cases. I also specialize in advising clients,
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`

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`both during and after cases, regarding the effects of ITC remedial orders, including exclusion
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`orders and cease-and-desist orders. I have participated in multiple inter partes proceedings before
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`the U.S. Customs and Border Protection, which are conducted to determine whether imported
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`goods are subject to Commission exclusion orders. I have also participated in enforcement
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`proceedings, advisory opinion requests, and modification proceedings at the Commission, which
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`are discussed in moredetail below.
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`14.—_The following is a representative list of cases in which I represented a party in the
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`ITC:
`
`e Certain Marine Air Conditioning Systems, Components Thereof, and Products
`Containing the Same; Inv. No. 337-TA-1346 (Represent Citimarine, L.L.C. and Mabru
`PowerSystems,Inc.)
`
`e Certain Electronic Devices, Semiconductor Devices, and Components Thereof; Inv. No.
`337-TA-1340 (Represented Western Digital Technologies, Inc.)
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`e Certain Digital Set-Top Boxes and Systems and Services Including the Same; Inv. No.
`337-TA-1315 (Represented BroadbandiTV,Inc.)
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`e Certain Replacement Automotive Lamps;
`America, Inc. and Kia Corporation)
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`Inv. No. 337-TA-1291 (Represent Kia
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`e Certain Replacement Automotive Lamps IT; Inv. No. 337-TA-1292 (Represent Hyundai
`Motor Company and Hyundai Motor Company)
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`e Certain Composite Baseball and Softball Bats and Components Thereof, Inv. No. 337-
`TA-1283 (Represented Monsta Athletics, LLC)
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`e Smart Thermostats, Load Control Switches and Components Thereof, Inv. No. 337-TA-
`1277 (Represented Xylem, Inc.)
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`e Certain Gabapentin Immunoassay Kits and Test Strips, Components Thereof, and
`Methods Therefor; Inv. No. 337-TA-1239 (Represented ARK Diagnostics,Inc.)
`
`e Customs proceedings related to Cloud-Connected Wood-Pellet Grills and Components
`Thereof, YTC-337-TA-1237 (Represented GMG Products LLC d/b/a Green Mountain
`Grills)
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`e Artificial Eyelash Extension Systems, Products, and Components Thereof, ITC-337-TA-
`1226 (Represented Lashify, Inc.)
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`

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`e Certain Movable Barrier Operator Systems and Components Thereof; Inv. No. 1209 ITC-
`337-TA-1209 (Represent Overhead Door Corporation)
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`e Percussive Massage Devices; TTC-337-TA-1206 (Represented HyperIce, Inc.)
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`e Certain Synthetic Roofing Underlayment Products and Components Thereof, Inv. No.
`337-TA-1202 (Represented Atlas Roofing Corporation and GAF Corporation)
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`e Certain Mobile Devices with Multifunction Emulators;
`(Represented DynamicsInc.)
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`Inv. No. 337-TA-1170
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`e Certain Light-Emitting Diode Products, Systems, and Components Thereof(III); Inv. No.
`337-TA-1168 (Represented OSRAM Licht AG, OSRAM Opto Semiconductors GmbH,
`and OSRAM Opto Semiconductors, Inc.)
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`e Taurine (2-Aminoethanesulfonic Acid), Methods ofProduction and Processesfor Making
`the Same, and Products Containing the Same; Inv. No. ITC-337-TA-1146 (Represented
`Songzhou Hu and Vitaworks IP, LLC f/k/a Vitaworks, LLC (NJ))
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`e Certain Strength-Training Systems and Components Thereof; Inv. 337-TA-1135 ITC-
`337-TA-1135 (Represented Hoist Fitness Systems, Inc.)
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`Inv. No. 337-TA-1123
`e Carburetors and Products Containing Such Carburetors;
`(Represented MATIndustries, LLC, Frictionless World, LLC and FNA Group,Inc.)
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`e Certain Radio Frequency Micro-Needle Dermatological Treatment Devices and
`Components Thereof, Inv. No. 337-TA-1112 (Represented InMode MD,Ltd., Invasix,
`Inc., d/b/a InMode and Invasix, Ltd.)
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`e Certain Light Engines and Components Thereof; Inv. No. 337-TA-1102 ITC-337-TA-
`1102 (Represented Lumencor,Inc.)
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`e Customsproceedings relating to Gas Spring Nailers and Components Thereof; Inv. No.
`337-TA-1082 (Represented Kyocera Senco Industrial Tools, Inc. f/k/a Kyocera Senco
`Brands, Inc.)
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`e LED Lighting Devices, LED Power Supplies, and Components Thereof; Inv. No. 337-
`TA-1081 (Represented Lowe’s Companies, Inc. and LG Sourcing, Inc.)
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`e Air Mattress Systems, Components Thereof, and Methods of Using the Same; Inv. No.
`337-TA-971 (Represented Sizewise Rentals, LLC, American National Manufacturing,
`Inc. and Dires LLC d/b/a Personal Comfort Bed)
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`e Network Devices, Related Software and Components Thereof (1); Inv. No. 337-TA-944
`(Represented Cisco Systems, Inc.)
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`

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`e Network Devices, Related Software and Components Thereof (II); Inv. No. 337-TA-945
`(Represented Cisco Systems,Inc.)
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`e Laser Abraded Denim Garments; Inv. No. 337-TA-930 (Represented Levi Strauss & Co.)
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`e Ancillary ITC proceedings relating to Marine Sonar Imaging Devices, Including
`Downscan and Sidescan Devices, Products Containing the Same, and Components
`Thereof; Inv. No. 337-TA-921 (Represented Garmin Corporation, Garmin International,
`Inc. and Garmin USA,Inc.)
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`e Protective Cases and Components Thereof, Inv. No. 337-TA-780 (Represented Otter
`Products LLC)
`
`C.
`
`List of Prior Publications
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`15.
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`The followingis a list of publications I have authored in the last approximately
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`ten years:
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`e What to Know About Adjudicating Redesigns Before and After ITC Determinations,
`IPWatchdog, Aug. 21, 2022
`
`e The Case for Early Adjudication of Potentially Dispositive Issues at the USITC,
`Landslide, May/June 2018
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`e European Court of Justice Ruling Adds to Challenges That U.S. Standard-Essential
`Patent Holders Face on Enforcement, WLF Legal Pulse, Sep. 1, 2015
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`e Standard-Essential Patents: An Increasingly Contentious Issue at the U.S. International
`Trade Commission, Washington Legal Foundation CONTEMPORARY LEGAL NOTE
`Series, No. 71, Jul. 2012
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`e Remedial Orders — The Casefor Conformity with Patent Injunctions, 337 Reporter, Vol.
`35, 2011
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`List of Prior Testimony
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`[have not offered any testimony as an expert at depositionortrial in the last four
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`D.
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`16.
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`years.
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`

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`States patents and impose remedies if products are found to be infringing.”); Yingbin-Nature
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`(Guangdong) Wood Industry Co.. v. ITC, 535 F.3d 1322, 1330 (Fed. Cir. 2008) (“When the
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`Commission determines that there has been a violation of section 337, it may issue one of two
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`types of exclusion orders: a limited exclusion order or a general exclusion order. Both orders
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`direct U.S. Customs and Border Protection (‘Customs’) to bar infringing products from entering
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`the country’) (citations omitted).
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`60.
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`In other words, regardless of any findings on validity and/or infringement before
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`the ITC, parties, such as Wirtgen America and Caterpillar, will always have an opportunity to be
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`heard in the District Courts (or Patent Trial and Appeal Board) for a final, and binding, decision
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`on patent validity and/or infringement.
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`VI.
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`ANALYSIS OF CERTAIN ROAD MILLING MACHINES AND COMPONENTS
`THEREOF, ITC-337-TA-1067
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`61.
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`In light of the foregoing discussion regarding the practices and procedures of the
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`ITC, I have been asked to review the history of this litigation in the context of those practices
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`and procedures. As discussed in detail below, Wirtgen America asserted various patents against
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`Caterpillar in District Courts and before the ITC. A summary ofthe asserted patents across the
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`Patent
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`different actions is shown below:
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`
`
`
`Delaware
`ITC Inv.
`Amended Delaware
`
`Complaint
`Action
`
`Yes
`°309 patent
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`
`
`°316 patent
`Yes
`Yes
`No
`No (dropped)!
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`
`
`
`’641 patent
`Yes
`Yes
`Yes
`Yes
`
`
`°592 patent
`Yes
`Yes
`No
`No (dropped
`
`
`
`°871 patent
`No
`No (dropped)
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`
`
`Minnesota
`Action
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`
`
`1 “Dropped” denotes that Wirtgen America either did not assert the patent when it amendedits
`Complaint (see J 185, supra), or dropped the patent to comply with the District Court’s Order to
`reduce claims (see Wirtgen Am., Inc. v. Caterpillar Inc., Case No. 1:17-cv-00770-JDW, Dkt. 199
`(D. Del. May 17, 2023)).
`I understand from counsel that Wirtgen America dropped claimsof the
`°316, ’592, 871, and ’932 Patents in response to the District Court’s Order.
`
`14
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`

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` °788 patent
`Yes Yes Yes No
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`
`
`
`
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`°932 patent
`Yes
`Yes
`No
`No (dropped)
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`
`
`°474 patent
`Yes
`Yes
`No
`Yes
`
`
`’628 patent No (dropped) Yes Yes Yes
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`
`
`
`
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`°340 patent No (dropped) Yes Yes Yes
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`
`
`
`
`
`
`
`
`RE268 patent|No No No Yes
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`
`
`
`
`
`°972 patent
`No
`No
`No
`Yes
`’390 patent Yes No No No
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`
`
`
`
`
`
`
`Yes
`*391 patent
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`A.
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`The District Court Actions
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`1.
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`The District of Minnesota Action
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`62.
`
`On June 15, 2017, Wirtgen America brought an action in the District Court for
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`the District of Minnesota (hereinafter, the “Minnesota Action”). See generally Wirtgen Am., Inc.
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`v. Caterpillar Prodotti Stradali S.r.L., Case No. 0:17-cv-02085-NEB-TNL, Dkt. 1 (D. Minn.
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`June 15, 2017) (Complaint). This action namedthe following defendants: Caterpillar Prodotti
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`Stradali S.r.L.; Caterpillar Bitelli SpA; Caterpillar Americas CV; Caterpillar Paving Products,
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`Inc.; and Caterpillar Inc. See id. at 1. Wirtgen America asserted infringement of the following
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`twelve patents: U.S. Patent Nos. 7,828,309 (the “’309 Patent”); 8,118,316 (the “’316 Patent”);
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`7,530,641 (the “’641 Patent”); 8,113,592 (the “’592 Patent”); 9,010,871 (the “’871 Patent’);
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`9,656,530 (the “’530 Patent”); 8,308,395 (the “’395 Patent”); 7,946,788 (the “’788 Patent’);
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`8,511,932 (the “’932 Patent”); 8,690,474 (the “’474 Patent”); 9,624,628 (the “’628 Patent”); and
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`9,644,340 (the “’340 Patent”) (collectively, the “Minnesota Asserted Patents”). See id. at 13.
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`63.
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`On September 5, 2017, upon consideration of a joint motion and finding good
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`cause, the Minnesota Action was stayed “pending final resolution of an investigation by the
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`United States International Trade Commission[.|” Wirtgen Am., Inc. v. Caterpillar Prodotti
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`Stradali S.r.L., Case No. 17-cv-2085-NEB-TNL, Dkt. 21 (D. Minn. Sept. 5, 2017) (Order
`
`15
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`

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`e
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`e
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`°
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`e
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`31 of the 34 originally asserted claims of the ’309 Patent;?
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`11 of the 15 originally asserted claims of the ’340 Patent;
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`16 ofthe 20 originally asserted claims of the 530 Patent;* and
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`7 of the 11 originally asserted claims of the ’641 Patent.
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`3.
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`The Hearing
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`73.
`
`The ITC held an evidentiary hearing from April 19 to 23, 2018. See FID at 4.
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`4.
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`FinalInitial Determination
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`TA.
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`On October 2, 2018, the ALJ issued its Final Initial Determination (of which
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`public version wasfiled on October 31, 2018) (“FID”). See generally, FID.
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`75.
`
`The ALJ noted that the accused products at the time of the hearing comprised
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`three of Caterpillar’s series of cold planers: PM600; PM800; and PM300(collectively, the “ITC
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`Accused Products”). See id. at 8. The ALJ further determined that the PM620 cold planer was
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`representative of the PM600 and PM800Series of cold planers, and the PM312 cold planer was
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`representative of the PM300Series of cold planers. Seeid.
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`76.
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`The respective ITC Asserted Claims that each of the ITC Accused Products were
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`specifically accused ofinfringing is as follows:
`
`
`
`
`Asserted Claims
`
`Accused Products
`
`10, 29, 36
`
`Asserted
`Patent
`PM600; PM800
`°309 Patent
`PM600; PM800
`°340 Patent
`PM622; PM820; PM822; PM825_|
`530 Patent
`PM300; PM600; PM800
`1,7
`641 Patent
`
`11,17 Inducement PM300; PM600; PM800
`
`
`
`
`Theory
`
`Literal
`Literal
`Literal
`
`
`
` Literal
`
`3 Amongthe dropped claims, Wirtgen America dropped independent claim 1 of the ’309 Patent,
`the only independent claim asserted in the original ITC complaint.
`4 Amongthe dropped claims, Wirtgen America dropped independent claim 1 of the ’530patent,
`the only independent patent claim asserted in the original ITC complaint.
`
`19
`
`

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`See id. at 55, 153, 254, 351.
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`77.
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`The ALJ ultimately concluded that, with respect to validity and infringement
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`issues:
`
`
`
`; 2,5, 16, 23
`
`Result of Wirtgen America’s Infringement Claims
`Asserted Patent
`Accused Products
`Result
`
`°309 Patent
`10
`PM600; PM800
`Notinfringed
`PM600; PM800
`Infringed
`PM300; PM600; PM800
`Noinducement?
`°641 Patent
`1, 7, 11, 17
`
`°340 Patent
`4,5, 9, 12
`PM600; PM800
`Infringed
`
`°530 Patent
`2,5, 16, 23
`PM600; PM800
`Infringed
`
`
`
`Result of Caterpillar’s Invalidity Defenses
`
`Asserted Patent|Asserted Claims Result
`°309 Patent
`10, 29, 36°
`Not invalid under §§ 102, 103
`
`°641 Patent
`1,7
`Indefinite
`Notinvalid under §§ 102, 103
`
`340 Patent
`4, 5,9, 12
`Invalid under § 103
`Notinvalid under § 103
`530 Patent
`Notindefinite
`
`2,5, 16
`
`See id. at 435-38. A detailed discussion of the ALJ’s findings with respect to each of the ITC
`
`Asserted Claims is found below. Thus, as shown in the foregoing tables, Caterpillar prevailed
`
`on at least some ofits non-infringement and invalidity defenses. These defenses are discussed
`
`in more detail below.
`
`the ALJ concluded that Wirtgen failed to show that
`> With respect to the PM300 Series,
`Caterpillar’s customers used a PM300Series product domestically, and therefore concluded that
`Wirtgen failed to show that Caterpillar induced its customers to infringe claims 11 and 17 of the
`641 patent. See FID at 437. With respect to the PM600 and 800 Series, the ALJ found that
`Wirtgen failed to show that Caterpillar induced its customers to infringe the asserted claims of the
`°641 patent. See id. However, the ALJ’s findings with respect to induced infringement of the
`PM600 and PM800Series were reversed by the Federal Circuit. See J] 177-180, infra.
`® Claim 36 ofthe 309 patent was found invalid as obvious upon Commission review,as discussed
`below. See Commission Notice at 2; J] 173-176, infra.
`
`20
`
`

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`78.|Wirtgen America asserted claims 10, 29, and 36 of the ’309 Patent against the
`
`a.
`
`The °309 Patent
`
`PM600 and PM800 Series cold planers. See FID at 55. Claim 10 depends from claim 1 and 9,
`
`claim 29 depends from claim 26, and claim 36 depends from claims 26 and 35. See id.
`
`In
`
`addition to asserting non-infringement defenses, Caterpillar asserted that the asserted claims of
`
`the °309 Patent were invalid pursuant to 35 U.S.C. § 103.
`
`i.
`
`Claim 10
`
`79.
`
`Claim 10 dependsfrom claim 1 and 9. See id. Claims 1, 9, and 10 are reproduced
`
`below:
`
`1. A road-building machine, of which a left front wheel or caterpillar, right front
`wheelor caterpillar, left rear wheel or caterpillar and right rear wheelor caterpillar
`is connected to a chassis of the road-building machine by meansof an actuating
`memberand is adjustable in height with respect to a frame of the road-building
`machine, the individual actuating members being connectedrigidly to the chassis
`and being positively coupled to one another in such a waythatthe left front wheel
`or caterpillar and the right rear wheel or caterpillar can be adjusted in height in the
`same direction and in the opposite direction to the right front wheel or caterpillar
`and the left rear wheel or caterpillar, and the actuating members being designed as
`double-acting working cylinders with a first and a second working chamber which
`are filled with a pressure medium, the working cylinders being connected to one
`another via coupling lines.
`
`9. The road-building machine as claimed in claim 1, characterized in that the
`coupling lines can be connected to a pressure medium source and/or a pressure
`medium sumpvia working lines with the aid of a valve control.
`
`10. The road-building machine as claimed in claim 9, characterized in that the
`valve control is designed such that all the wheels are raised in a first operating
`modeandare lowered in a second operating mode,this taking place in each case
`by the same amount.
`
`See id. at 55-56, 64, 65.
`
`80.
`
`The ALJ foundthat “the PM620infringes claim 1.” FID at 63; see also id. at 55-
`
`63. Similarly, the ALJ found that the PM620 “infringes claim 9.” Jd. at 65; see also id. at 64-
`
`65.
`
`21
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`81.|However, the ALJ found that “the PM620 did not infringe claim 10 because it
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`lacks wheels.” See id. at 65-67. “Claim 10 requires that the valve control of claim 9 is configured
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`such that ‘all the wheelsare raised in a first operating mode and are lowered in a second operating
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`mode, this taking place in each case by the same amount.” Jd. at 65. The ALJ agreed with
`
`Caterpillar’s argument that the PM620 did not infringe becauseit “features caterpillars (tracks),
`
`and thus lacks wheels, as claim 10 requires.” Jd. at 66. The ALJ rejected Wirtgen America’s
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`reliance on the statement in the specification that “[w]hen a front wheelis referred to hereinafter,
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`this is also understood to mean a caterpillar.” Jd. He reasonedthat this definition was limited to
`
`the specification alone because “the independent claims use the language ‘wheelor caterpillar’
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`rather than just a wheel.” Jd.
`
`82.
`
`The ALJ found that Caterpillar failed to show, by clear and convincing evidence,
`
`that claim 10 was obvious over the combination of Swisher and Neumeier, pursuant to 35 U.S.C.
`
`§ 103.
`
`See id. at 94-106; U.S. Patent No. 4,235,580 (“Swisher”); German Patent Pub.
`
`DE1918393 (“Neumeier’”). The parties did not dispute that Swisher and Neumeier werepriorart
`
`references under 35 U.S.C. § 102(b). See id. at 94.
`
`83.
`
`The ALJ also found that Caterpillar showed, by clear and convincing evidence,
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`that a POSA would have been motivated to combine Swisher and Neumeier. See id. at 115-120.
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`The ALJ found that a POSA “would have been motivated to rigidly mount Neumeier’s positively
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`coupled hydraulic cylinders to Swisher’s road-building machine to improvestabilization over
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`uneventerrain[.]” Jd. at 118. The ALJ reasonedthat although the reference belongs to different
`
`classes of vehicles, a POSA “would [not] have been deterred from combining”them. Seeid. at
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`119.
`
`22
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`

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`84.
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`Specifically, the ALJ found that Swisher and/or Neumeier disclosed each claim
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`requirement of claim 1. See id. at 94-99. Thus, had it been asserted at the ITC hearing, the ALJ
`
`would have found that the only independent claim of the ’309 Patent would have been obvious
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`under § 103.
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`85.
`
`The ALJ also found that Neumeier disclosed each claim requirement of claim 9.
`
`See id. at 99-100. Thus, had it been asserted at the ITC hearing, the ALJ would have found that
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`the claim 9 of the *309 Patent would have been obvious under § 103.
`
`86.|However, the ALJ found that Caterpillar failed to show, by clear and convincing
`
`evidence, that Swisher and/or Neumeier disclosed the claim requirements of claim 10. Seeid. at
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`100-106.
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`ii.
`
`Claim 29
`
`87.
`
`Claim 29 dependsfrom claim 26. See id. at 55. Claims 26 and 29 are reproduced
`
`below:
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`26. A road-building machine, comprising: a chassis having a forward direction; a
`left front wheelor caterpillar; a right front wheel or caterpillar; a left rear wheel or
`caterpillar; a right rear wheel or caterpillar; a first working cylinder rigidly
`connected to the chassis and connected to the left front wheel or caterpillar for
`adjusting a height of the left front wheel or caterpillar relative to the chassis; a
`second workingcylinder rigidly connected to the chassis and connectedto the right
`front wheel or caterpillar for adjusting a height of the right front wheel or
`caterpillar relative to the chassis; a third working cylinderrigidly connected to the
`chassis and connectedto the left rear wheel or caterpillar for adjusting a height of
`the left rear wheel or caterpillar relative to the chassis; a fourth working cylinder
`rigidly connected to the chassis and connectedto the right rear wheelorcaterpillar
`for adjusting a height of the right rear wheel or caterpillar relative to the chassis; a
`rotating working roller or rotor supported from the chassis between the front
`wheelsor caterpillars and the rear wheels or caterpillars and extending transversely
`to the forward direction; each of the working cylinders including at least one
`working chamberfilled with a pressure medium; and coupling lines connecting
`the working cylinders to one another and providing a positive hydraulic coupling
`between the working cylinders in such a waythatthe left front wheelor caterpillar
`and the right rear wheelor caterpillar are adjusted in height in the same direction
`and in the opposite direction to the right front wheel or caterpillar and the left rear
`wheelor caterpillar.
`
`23
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`

`

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`29. The road-building machine of claim 26, wherein the machine hasa four sided
`stability pattern having a widest transverse dimension, transverse to the forward
`direction of the chassis, which widest transverse dimensionfalls within a footprint
`of the workingroller or rotor.
`
`See id. at 42-43.
`
`88.
`
`The ALJ found that the “PM620 infringes claim 26.” FID at 72; see also id. at
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`67-72. Similarly, the ALJ found that the PM620 “infringes claim 29.” Id. at 74; see also id. at
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`72-74.
`
`89.
`
`Although the ALJ found that Swisher and/or Neumeier disclosed each claim
`
`requirement of claim 26 (see id. at 107-111), the ALJ found that that Swisher and/or Neumeier
`
`did not disclose the claim requirements of claim 29 (see id. at 111-115). Specifically, the ALJ
`
`found that while Caterpillar sufficiently showed that a POSA would have been motivated to
`
`combinethe references (see id. at 115-120), and “[w]hile Swisher does describe the center of
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`gravity of the machine,
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`.
`
`.
`
`. Swisher’s discussion is not detailed enough to conclude that a
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`hypothetical Swisher-Neumeier combination necessarily teaches the subject matter of claim 29.”
`
`Id. at 115.
`
`iii.
`
`Claim 36
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`90.
`
`Claim 36 depends from claims 26 and 35. See id. at 55. Claim 26 is reproduced
`
`above. See { 87, supra. Claims 35 and 36 are reproduced below:
`
`35. The road-building machineof claim 26, further comprising: a pressure medium
`source; at least one working line connecting the pressure medium sourceto at least
`one ofthe coupling lines; and at least one control valve disposedin the at least one
`working line, the control valve having a first position in which the positive
`hydraulic coupling between the working cylinders is temporarily cancelled, and
`having a second position in which the positive hydraulic couplingis restored.
`
`36. The road-building machine of claim 35, wherein the at least one working line
`and the at least one control valve are arranged so that an individual one of the
`wheels or caterpillars is raised in a first operating mode and is lowered in a second
`operating mode.
`
`24
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`

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`See id. at 43.
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`91.
`
`As discussed above, the ALJ found that the PM620 infringed claim 26. See FID
`
`at 67-72. Similarly, the ALJ found that “the PM620 infringes claim 35.” Jd. at 77; see also at
`
`id. at 74-77. The ALJ also found that “the PM620 infringes claim 36.” Jd. at 79; see alsoid. at
`
`77-79.
`
`92.
`
`The ALJ found that Caterpillar had not shown that claim 36 was “invalid under
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`35 U.S.C. §§ 102 or 103.” FID at 436. This was despite the ALJ’s finding that Swisher,
`
`Neumeier, and/or Frey disclosed each claim requirement of claims 35 and 36. See id. at 120-
`
`128; Swisher; Neumeier; U.S. Patent Pub. No. 2022/0074758 (“Frey”). Following, the ALJ
`
`concluded that “if claim 26 were found obvious, the administrative law judge would find claim
`
`35 obvious”and “claim 36 obvious[,]” implying that claim 26 was not found obvious. Jd. at 123,
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`128. That implication was erroneous, as the ALJ found that each claim requirement of claim 26
`
`wasdisclosed in the prior art. See id. at 107-111.’
`
`93.
`
`Caterpillar successfully petitioned the ITC to review the ALJ’s finding that
`
`Caterpillar failed to show, by clear and convincing evidence, that claim 36 was invalid under
`
`Section 103. See §§ 173-175, infra. Consequently, that finding was reversed by the ITC, with
`
`the Commission Opinion making clear that claim 36 wasinvalid under Section 103. See id.
`
`iv.
`
`Secondary Considerations
`
`94.
`
`Although the ALJ found that Caterpillar failed to show a prima facie case of
`
`obviousness, the ALJ also rejected Wirtgen America’s argument that the objective indicia of
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`7 Therefore, the ALJ should have concluded that claims 35 and 36 were obvious. This error was
`recognized by the ITC,andthe finding reversed in the Commission Opinion, discussed below.
`
`25
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`

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`copying and commercial success applied to the asserted claims of the ’309 Patent. See FID at
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`130-136.
`
`b.
`
`The ’340 Patent
`
`95. Wirtgen America asserted claims 4, 5, 9, and 12 of the ’340 Patent against the
`
`PM600 and PM800 Series cold planers underliteral infringement. See FID at 254. Claim 4
`
`depends from claim 1, claim 5 depends from claims 1 and 4, and claim 12 depends from claim
`
`9. See ’340 Patent at 6:46-8:20. In addition to asserting non-infringement defenses, Caterpillar
`
`asserted that the asserted claims of the ’340 Patent were invalid pursuant to 35 U.S.C. §§ 102
`
`and/or 103. Specifically, Caterpillar contended that: (1) the Marini MP 1300 anticipated claim 1
`
`and rendered claims 4, 5, 9, and 12, either by itself or in combination with other references (see
`
`id. at 285-310); (2) claims 4, 9, and 12 were obvious over MP 1300 in view of Overton (see id.
`
`at 310-316; U.S. Patent No. 3,761,988 (“Overton”)); (3) claims 4, 5, 9, and 12 were rendered
`
`obvious by the PM-565 (see FID at 316-335); (4) claims 4, 9, and 12 are obvious over PM-565
`
`in view of Overton (see id. at 335-338).
`
`i.
`
`Claim 4
`
`96.
`
`Claim 4 depends from claim 1. See FID at 248. Claims 1 and 4 are reproduced
`
`below:
`
`1. A construction machine, comprising:
`
`a machine frame;
`
`a milling drum mountedto rotate about a milling drum axis, the milling drum axis
`being fixed relative to the machine frame;
`
`a scraper blade located behind the milling drum with reference to a direction of
`travel of the construction machine, the scraper blade including an upper part and
`a lowerpart, the lower part being movablein a sliding non-pivotal motionrelative
`to the upperpart;
`
`26
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`

`

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`a lifting actuator connected between the upper and lowerparts to slide the lower
`part relative to the upper part between a downward extended position and an
`upward retracted position; and
`
`a swiveling actuator separate from thelifting actuator, the swiveling actuator being
`connected between the upper part of the scraper blade andafixed part fixed
`relative to the machine frame, the swiveling actuator being configured to extend
`to pivot the scraper blade upward about a swiveling axis parallel to and spaced
`apart from the milling drum axis.
`
`the swiveling actuator is
`4. The construction machine of claim 1, wherein:
`pivotally connected to the upper part of the scraper blade at a pivotal connection
`having a pivotal axis lowerin height than the swiveling axis.
`
`See id.
`
`97.
`
`The ALJ found that “the PM620 infringes claim 1.” FID at 261; see als