Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 1 of 9 PageID #: 24040
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`Exhibit 79
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 2 of 9 PageID #: 24041
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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY
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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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`JOINT OPENING EXPERT REPORT OF JOSEPH RAKOW, Ph.D., P.E., F.A.S.M.E.
`AND ADAM SORINI, Ph.D.
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEY EYES ONLY
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`2111403.000 - 6524
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 3 of 9 PageID #: 24042
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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY
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`I.
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`1.
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`Introduction
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`We, Joseph Rakow and Adam Sorini, have been retained in this matter by counsel for
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`Caterpillar Inc. (“Caterpillar”). We have been informed that Plaintiff Wirtgen America,
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`Inc. (“Wirtgen America”) has filed suit in the United States District Court, District of
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`Delaware, alleging that Caterpillar infringes several patents, including U.S. Patent No.
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`9,656,530 (“the ’530 Patent”) ( the “Asserted Patent”) by making, using, selling, and
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`offering to sell certain PM600 and PM800 series milling machines prior to a design change
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`(the “Accused Large Milling Machines”) and its RM600 and RM800 series rotary mixers
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`(the “Accused Rotary Mixers”), collectively “the Accused Products,” in the United States.
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`More particularly, Wirtgen America alleges that Caterpillar infringed Claims 5, 13, 16, and
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`22 of the ’530 Patent (collectively, the “Asserted Claims”).
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`2.
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`It is our 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 anticipated by and/or obvious in light of prior art.
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`3.
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`We 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 we
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`have reached to date regarding these matters.
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`4.
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`The opinions we provide are our own and are based on our independent review of the
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`documents and information referenced in this report and on our education, experience, and
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`training. Between now and such time as we are asked to testify at a deposition and/or trial,
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`we expect to continue our review, evaluation, and analysis.
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 4 of 9 PageID #: 24043
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`D.
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`Summary of Opinions
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`41.
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`Each of us has formulated the opinions set forth here as appropriate to our areas of expertise
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`and based upon our experience, education, training, review of technical documents (listed
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`in Appendix E and references cited in this report), and inspections of relevant machines
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`and prior art.
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`42.
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`In reaching our opinions, we each have considered the viewpoint of a person having
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`ordinary skill in the art (PHOSITA) at the time of the invention of the Asserted Patent. As
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`explained below, we are familiar with the level of skill of a person of ordinary skill in the
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`art regarding the relevant technology at issue as of that time. We each meet or exceed the
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`level or ordinary skill. A precise analysis of certain technical artifacts produced during this
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`litigation may require more than ordinary skill in the art to perform. For example, a
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`PHOSITA would generally be able to make use of electronic controllers and would
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`generally understand that such controllers can be programmed with software; however, a
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`PHOSITA would not necessarily be able to reverse-engineer software functionality based
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`on PDF printouts of disassembled controller machine code (as, e.g., were produced in this
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`matter).
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`43. We understand that the Asserted Patent was issued by the USPTO and as such it is
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`presumed to be valid.
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`44. We each undertook independent review of each Asserted Claim. It is our opinion that there
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`is clear and convincing evidence that each Asserted Claim would have been obvious in
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`light of prior art. A summary of the grounds on which we are relying to demonstrate
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`obviousness is shown in the following table.
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`2111403.000 - 6524
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 5 of 9 PageID #: 24044
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`’530 Patent Asserted Claims Grounds for Invalidity
`35 U.S.C. §103: Obvious over PM-565 in view of
`Glasson
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`5, 13, 16, 22
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 6 of 9 PageID #: 24045
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`V. Summary of the Prior Art
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`A.
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`PM-565 and PM-465
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`103. The Caterpillar PM-465 (“PM-465”) and Caterpillar PM-565 (“PM-565”), shown in Figure
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`389,90 and Figure 491,92, below, are both front-discharge cold planers that use a rotor to cut
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`a controlled depth of pavement with the cut material (i.e., the reclaimed asphalt pavement)
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`exiting from the front of the machine via a conveyor. One advantage of a front-discharge
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`cold planer design is that the machine can mill road material in the same direction as traffic
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`and load a truck that is traveling just ahead of it moving in the same direction. This provides
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`multiple benefits; for example, the truck can drive forward throughout the loading process,
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`and it can easily leave without needing to cross into traffic.93
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`104. The PM-465 and the PM-565 have 75 in. and 83 in. wide rotors94, respectively, and are
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`classified as a “half-lane cold planers”.95 Each machine is powered by a diesel engine and
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`has four independently driven tracks connected to the machine via four “legs.” Each leg is
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`steerable (depending on the driving mode) and can telescope, with the front two legs used
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`to control the height of the rotor and its lateral inclination with respect to the ground, i.e.,
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`the grade and slope of the cut surface.
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`105. Each machine has an operator’s station with dual controls96 to support an operator
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`maintaining a trajectory based on operating the machine on the right side or the left side of
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`the operator area, providing flexibility which can accommodate milling operations wherein
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`89 CAT-770_047008, p. 1/12.
`90 CAT-770_050843, p.1/4.
`91 EXPONENT_0001461.
`92 EXPONENT_0001309.
`93 CAT0035566, p. 5/184., RX-0003, p. 7/182.
`94 CAT0035508, p. 6/37.
`95 CAT0035566, p. 5/184, RX-0003, p. 5/182.
`96 CAT-770_047008, p. 6/12., CAT-770_050843, p. 3/4.
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 7 of 9 PageID #: 24046
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`a particular side is providing a “guide” for the machine’s trajectory (e.g., a curb as shown
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`in Figure 3, top).
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`Figure 3. Caterpillar PM-465 cold planer (top) and a Caterpillar PM-565 cold planer (bottom)
`from documentation.
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 8 of 9 PageID #: 24047
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`Figure 4. 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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`106.
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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,97
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`Parts Manual,98 and Service Training Meeting Guide99 were “present in PM-565 machines
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`sold during the 1990’s.”100 Additionally, in the same matter Mr. Rife stated the PM-465
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`Operation and Maintenance Manual101 and Service Training Meeting Guide102 “describe
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`97 RX-0001 [CAT0029522 – CAT0029673].
`98 RX-0002 [CAT0036555 – CAT0037287].
`99 RX-0003 [CAT0029682 – CAT0029863].
`100 RX-0987C, p. 10/14.
`101 RX-0027 [CAT0034759 – CAT0034908 or CAT-770_047609 – CAT-770_047765].
`102 RX-0028 [CAT0016874 – CAT0017057 or CAT0035566 – CAT0035749].
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`Case 1:17-cv-00770-JDW Document 230-3 Filed 10/05/23 Page 9 of 9 PageID #: 24048
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`VIII. Conclusion
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`181. For at least the reasons stated above, it is our opinion that the Asserted Claims are invalid.
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`We 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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`Adam Sorini, Ph.D.
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