Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 1 of 11 PageID #: 23808
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`Exhibit 76
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 2 of 11 PageID #: 23809
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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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`OPENING EXPERT REPORT OF JOSEPH RAKOW, Ph.D., P.E., F.A.S.M.E.
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 3 of 11 PageID #: 23810
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`I.
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`1.
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`Introduction
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`I, Joseph Rakow, have been retained in this matter by counsel for Caterpillar Inc.
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`(“Caterpillar”). I have been informed that Plaintiff Wirtgen America, Inc. (“Wirtgen
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`America”) has filed suit in the United States District Court, District of Delaware alleging
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`that Caterpillar infringes several patents, including U.S. Patent No. 7,828,309 (“the ’309
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`Patent”) (the “Asserted Patent”) by making, using, selling, and offering to sell certain
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`PM600 and PM800 series milling machines prior to a design change (the “Accused
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`Products”) in the United States. More particularly, Wirtgen America alleges that Caterpillar
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`infringed claims 10 and 29 of the ’309 Patent (collectively, the “Asserted Claims”).
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`2.
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`It is my understanding that Caterpillar has denied liability for infringement of the Asserted
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`Patent, stating that the Accused Products did not infringe any valid claims of the Asserted
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`Patent and that the Asserted Claims are invalid at least because the inventions claimed in
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`the Asserted Claims are obvious in light of prior art.
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`3.
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`I have been asked to provide technical opinions regarding whether the Asserted Claims
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`would have been obvious in view of certain prior art. This report sets forth the opinions I
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`have reached to date regarding these matters.
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`4.
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`The opinions I provide are my own and are based on my independent review of the
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`documents and information referenced in this report and on my education, experience, and
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`training. Between now and such time as I am asked to testify at a deposition and/or trial, I
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`expect to continue my review, evaluation, and analysis.
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`5.
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`I also expect to review reports submitted by Wirtgen America’s expert(s) and expressly
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`reserve the right to amend or supplement this report, as appropriate, after considering the
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`opinions set forth in Wirtgen America’s expert reports. I also expressly reserve the right to
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 4 of 11 PageID #: 23811
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`regarding the relevant technology at issue as of that time. I consider myself to be a person
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`of ordinary skill in the art.
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`13.
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`I understand that the Asserted Patent was issued by the USPTO and, as such, it is presumed
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`to be valid.
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`14.
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`I undertook an independent review of each Asserted Claim. It is my opinion that there is
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`clear and convincing evidence that each Asserted Claim would have been obvious in light
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`of prior art. A summary of the grounds on which I am relying to demonstrate obviousness
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`is provided in the following table:
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`’309 Patent Asserted Claims Grounds for Invalidity
`10, 29
`35 U.S.C. §103: Obvious over PM-565 or PM-465
`in View of Neumeier
`35 U.S.C. §103: Obvious over RX-500 in View of
`Neumeier
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`10, 29
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 5 of 11 PageID #: 23812
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`Figure 10: Caterpillar PM-465 cold planer (top) and Caterpillar PM-565 cold planer (bottom)
`from inspection.
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`1.
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`Inspection and Documentation
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`63.
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`In a witness statement made during a previous ITC matter, Mr. Conwell (Bud) Rife stated
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`that the features in the PM-565 described in the Operation and Maintenance Manual,56
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`Parts Manual,57 and Service Training Meeting Guide58 were “present in PM-565 machines
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`sold during the 1990’s.”59 Additionally, in the same matter, Mr. Rife stated the PM-465
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`Operation and Maintenance Manual60 and Service Training Meeting Guide61 “describe the
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`56 RX-0001, pp. 1-152/152.
`57 RX-0002, pp. 1-733/733.
`58 RX-0003, pp. 1-182/182.
`59 RX-0988C, p. 10/14.
`60 RX-0027, pp. 1-150/150.
`61 RX-0028, pp. 1-184/184.
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 6 of 11 PageID #: 23813
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`features of the [PM-465] machines.”62 These documents are utilized in the analysis
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`contained herein.
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`64.
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`Exponent inspected a PM-465 (serial number 5ZS0016363) and PM-565 (serial number
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`3TK0009264) on April 20 and 21, 2023 in Minerbio, Italy. In a witness statement made
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`during a previous ITC matter, Mr. Eric Engelmann indicated that he inspected and operated
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`the same PM-565 machine (serial number 3TK00092) in January 2018. Furthermore, he
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`indicated that based on a spreadsheet showing sales of Caterpillar machines, that specific
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`machine was built in 1995 and originally sold in the United States in 1996.65
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`65.
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`Based on my analysis, the above-described PM-465 and PM-565 machines are consistent
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`with how the machines are described and depicted in product literature, including the
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`materials discussed above. The inspected PM-465 and PM-565 machines are, at minimum,
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`representative of the machines sold in the 1990s and is representative machines sold before
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`2005.
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`2.
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`Timeline
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`66.
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`Testimony regarding the PM-565 indicates that the machine first went on sale in the United
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`States in 1992 as Caterpillar’s first front-material discharge machine.66 The PM-465
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`followed, and was released in 1997.67 Both machines were sold throughout the 1990s and
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`2000s.68 I understand that Caterpillar has produced several invoices showing sales of
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`specific machines in the United States during the 1990s.69 Testimony regarding the PM-
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`62 RX-0988C, p. 12/14.
`63 EXPONENT_0000798.
`64 EXPONENT_0000540.
`65 RX-0988C, p. 5/13.
`66 RX-0984C, p. 12/60.
`67 RX-0985C, p. 120/239.
`68 RX-0985C, p. 120/239; RX-0985C, p. 66/239.
`69 RX-0988C, p. 9-10/14.
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 7 of 11 PageID #: 23814
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`465 indicates that the PM-465 is a “Caterpillar-designed machine” which was “designed
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`before the purchase of Bitelli.”70 I am informed that Caterpillar acquired Italian cold planer
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`manufacturer Bitelli in 2000.
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`3.
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`PM-465 and PM-565 (and PM-565B) Comparison
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`67.
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`Key differences between the PM-465 and PM-565 include the overall dimensions and
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`engine size. These are summarized in Figure 13, below. The PM-565, with an overall
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`length of 47 ft. 6 in. and overall width of 10 ft. 4 in., is larger than the PM-465, with an
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`overall length of 42 ft. 1 in. and overall width of 8 ft. 2 in. The PM-565 uses an eight-
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`cylinder Caterpillar 3408B diesel engine, outputting 525 hp with 1099 cu in of
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`displacement.71 The PM-465 uses a six-cylinder Caterpillar 3406C diesel engine,
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`outputting 460 hp at 895 cu in of displacement.72 Testimony regarding the two machines
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`indicated that “[g]enerally, the PM-465 has the same functionality as the PM-565”73 and
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`that “Caterpillar’s PM-465 Cold Planer Machine use[s] essentially the same scraper-blade
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`design as the PM-565.”74 Figure 13 includes specifications for the PM-565B. It has larger
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`engine size, faster operating and travel speeds, fewer teeth on the rotor, and faster speed of
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`the conveyor belt compared to the PM-565. Also, the lifting columns of the PM-465 are
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`square in cross-section, whereas the lifting columns of the PM-565 are circular in cross-
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`section, as seen in Figure 9. The arrangement of the lifting columns of the PM-565, as seen
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`in Figure 11,75 is rectangular from a bird’s-eye-view, whereas the arrangement of the lifting
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`70 Deposition of Mr. Conwell Rife, taken February 2nd, 2023, p. 70:6–15.
`71 CAT0035508, p. 6/37; CAT-770_047008, p. 8/12; CAT-770_048961, p. 44/464.
`72 CAT0035508, p. 6/37; CAT-770_047099, p. 58/510; elsewhere documentation suggests 500 hp at 893 cu in.
`displacement (CAT-770_050843, p. 4/4).
`73 RX-0988C, p. 11/14.
`74 RX-0984C, p. 13/60.
`75 CAT0029674, p. 7/8.
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`columns of the PM-465, as seen in Figure 12,76 is isosceles trapezoidal from a bird’s-eye-
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`view.
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`68.
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`Testimony regarding the PM-565B indicated similarity with the PM-565 in that the PM-
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`565B “ha[s] all the same basic functions as the PM-565, with a different engine.”77 Based
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`on documentation provided and the scope of invalidity analyses contained herein, the PM-
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`565 and PM-565B are treated in this report as the same machine.
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`76 CAT-770_047008, p. 10/12.
`77 RX-0987C, p. 4/13.
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`Figure 11. Rectangular arrangement of lifting columns of the PM-565 annotated in red.
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`Figure 12. Trapezoidal arrangement of lifting columns of the PM-465 annotated in red.
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 10 of 11 PageID #: 23817
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`Figure 13. Various specifications for the PM-465, PM-565, and PM-565B from
`documentation.
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`4.
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`Grade/Slope Control
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`69.
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`The PM-465 and PM-565 have both manual and automatic control of the machine
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`frame/rotor grade and slope. To facilitate the grade and slope control, the PM-465 and PM-
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`565 are configured to use both contacting mechanical sensors (such as grade wheels or
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`Case 1:17-cv-00770-JDW Document 229-29 Filed 10/05/23 Page 11 of 11 PageID #: 23818
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`X. Conclusion
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`149. For at least the reasons stated above, it is my opinion that the Asserted Claims are invalid.
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` I
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` declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on May 19, 2023 at Menlo Park, California
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`Joseph Rakow, Ph.D, P.E., F.A.S.M.E.
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