Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 1 of 9 PageID #: 24066
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`Exhibit 84
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 2 of 9 PageID #: 24067
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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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`C.A. No. 17-770- JDW
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`REPLY EXPERT REPORT OF DR. ADAM SORINI
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`CATERPILLAR INC.,
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`Defendant.
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`v.
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`2111403.000 - 3220
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 3 of 9 PageID #: 24068
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`patent. Likewise, Dr. Giles has not shown that the PM-465 and PM-565 practice any portion of
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`the asserted claims of the ’618 Patent.
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`62.
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`In paragraph 124 of his report, Dr. Giles shows a photograph of “milling drum
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`housing display example” (WA-17232022) and states “[b]ecause this milling drum housing
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`(including each of its individual components) was complete and detached from the frame, it shows
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`the milling drum housing is distinct from the frame.” However, Dr. Giles’s reasoning is deficient.
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`The intrinsic record of the ’618 Patent nowhere appears to require the interpretation that Dr. Giles
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`advances. That is, nothing expressly stated or inherently implied by the ’618 patent specification
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`suggests that claimed frame is necessarily one continuous or seamless integrated piece of
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`equipment. Indeed, a POSITA would understand the machine frame may be comprised of multiple
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`components connected together through any of a number of known methods, such as screws, bolts,
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`welds, etc. The claims and intrinsic record of the ’618 Patent are agnostic to the method of
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`constructing and forming the machine’s frame.
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`63.
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`Claim 1 and Claim 8 respectively recite “a primary rotor spray bank mounted to the
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`frame” and “a first spray bank mounted to the frame.” Dr. Giles opines that the language of claim
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`1 and claim 8 requires the primary rotor spray bar must be mounted directly to the frame. This is
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`not supported, expressly or by implication, in the ’618 patent specification, nor is it shown in the
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`context of a patent figure or recited by one or more claims. Dr. Giles opines
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`[a] POSITA would understand “mounted to” to mean that the item
`must be directly mounted to the frame, whereas “mounted on”
`allows for indirect attachment to the frame so long as the feature
`(in the claims, the water reservoir) is supported by the frame. For
`this reason, the primary rotor spray bank must be directly connected
`to the frame (Id., ¶118; emphasis added).
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`connection would only differ from the construed connection insubstantially because the mounting
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`performs substantially the same function, in substantially the same way, to achieve substantially
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`the same result. The same function—namely, affixing the spray bar above the drum so that it can
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`spray water on the drum—is performed in either case. Likewise, it performs this function in
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`substantially the same way – mounted to the frame (albeit indirectly in the event of such a
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`construction from the Court). Finally, the same result is achieved: the spray bar is placed such that
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`it can spray water on the milling drum. Thus, the Accused Wirtgen America Products would still
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`satisfy the corresponding claim limitations under the Doctrine of Equivalents.5
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`80.
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`B.
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`Thus, my opinion on this element remains unchanged despite Dr. Giles criticisms.
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`“[A] water reservoir mounted on the frame and configured to enclose water”
`1.
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`The Water Reservoir Is Integrally Formed in the Frame, Not Mounted
`on the Frame
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`81.
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`In paragraph 134 of his Rebuttal Report, Dr. Giles asserts it is his “opinion that the
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`Accused Wirtgen America Machines do not include a water reservoir that would be considered
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`‘mounted on’ the frame because the water reservoir is formed by the frame itself. Thus, there is no
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`separate part that must be ‘mounted on’ the frame.”
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`82.
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`Dr. Giles repeats language of the ’618 patent specification that recites the water
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`reservoir is “mounted on” the frame, in the same manner as recited by the claim element, and he
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`presents this as further evidence to support his position, rather than repetition of the same claim
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`language that reiterates the same point in the same way. For instance, he opines “[b]y stating that
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`the water reservoir is ‘carried’ and ‘mounted on the frame,’ these disclosures suggest the water
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`reservoir is a discrete component from the frame itself that must be mounted on the frame” (Id.,
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`5 I note that Wirtgen America did not specify the particulars of this defense in its interrogatory response and
`therefore I had no ability to determine earlier whether Dr. Giles’ opinion would avoid infringement under the
`doctrine of equivalents.
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 5 of 9 PageID #: 24070
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`¶136). I disagree with Dr. Giles, and furthermore, there is no support in the ’618 patent
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`specification that the water reservoir must be a discrete detachable component.
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`83.
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`Dr. Giles contends the Accused Wirtgen America products do not satisfy the
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`requirements of this claim element because, in the Wirtgen W210 Fi, “the water reservoir is not a
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`discreet [sic] component that can be removed. Instead, it is integrally formed as part of the frame.
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`The water reservoir is therefore not ‘mounted on the frame’.” (Id., ¶138). In paragraph 137 of his
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`report, Dr. Giles includes a series of figures (of unknown provenance6) to support this, including
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`the (WA-17232181, WA-17232182, WA-17232184). These photos purportedly show that the
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`water reservoir is “formed by” the frame, which Dr. Giles seems to attempt to differentiate from
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`“mounted on.” The claim’s use of the term “mounted on” does not limit the means by which such
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`mounting is accomplished. Further, there is no teaching in the specification to which Dr. Giles
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`points suggesting that the inventors intended to limit the term “mounting” to any particular method
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`of mounting. Indeed, the specification is silent on the way in which the water reservoir is mounted
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`and is therefore agnostic to any such methods. Rather, a POSITA would understand that the water
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`reservoir should be located substantially towards the top of the machine, which is represented in
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`the claims with the verbiage “mounted on.” A POSITA would understand that mounting the
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`reservoir toward the top or “on” the machine would be advantageous due to the approximately
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`uniform and downward-pointing gravitational field of the earth. Mounting the water reservoir on
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`or atop the machine allows the water pump to work with gravity rather than against it. As such, a
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`6 Dr. Giles has not indicated where the photos in his paragraph 137 were taken or by whom. He has also not
`indicated where in the production certain of these photographs are located, for example the photograph he identifies
`as WA-17232184 in his report is not the same as the photograph shown on the document Bates-stamped as WA-
`17232184. Dr. Giles also indicates that “the CAD model” is shown in his images labeled WA-17232180, however
`this bates-stamped document does not show the images Dr. Giles’s purports it to show, rather it is another
`photograph, not a CAD model nor screenshots from a CAD model viewer. To the extent that I am provided these
`missing/mislabeled figures or the missing CAD model data used to generate the figures, I reserve the right to amend
`my opinions accordingly.
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 6 of 9 PageID #: 24071
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`POSITA reading the claims, figures, and specification of the ’618 Patent at the time of its invention
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`would understand that the claim only requires the reservoir to be mounted on the machine, where
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`the preposition “on” has its usual meaning. By arguing to the contrary, Dr. Giles seems to contend
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`that the term “mounted on” implies a certain specific form of attachment which is unsupported in
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`the specification. He also appears to interpret the language as requiring an unspecified level of
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`ease with which a component may be detached – which interpretation also lacks any apparent
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`support in the specification.
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`84.
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`Dr. Giles also includes a series of figures generated from a CAD file (WA-
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`17232180),7 also in paragraph 137 of his report, apparently to show that the collection of
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`components attached together comprises a “unitized construction” (Id., ¶137). However, even if it
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`were demonstrated that the CAD figures show one continuous integrated component, the portion
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`of the integrated component that is formed on top to hold water is the water reservoir and this is
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`still mounted on the rest of the frame. Therefore, the W210 Fi satisfies the limitations of this claim
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`element as it includes a “water reservoir mounted on the frame and configured to enclose water.”
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`85. Moreover, I note that I have not been given access to these CAD files to consider
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`whether or how accurate they may be with respect to the physical machines that I and/or Dr. Giles
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`inspected. To the extent I am later provided with such access, I reserve the right to supplement my
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`opinions.
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`86.
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`In sum, my opinion remains the same that the Accused Wirtgen America Products
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`practice this claim limitation. This is because, as I discussed in my opening report and above, the
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`7 Dr. Giles has not indicated where in the production these example CAD images (from his three figures are
`located). He cites to “WA-17232180,” but this is an unrelated photograph. Dr. Giles has also not indicated where in
`the production the native CAD files are located. I have not been provided these CAD drawing to analyze myself (nor
`have I been provided with Bates-stamped versions of the images that Dr. Giles embedded in his report); and to the
`extent that I am provided these files, I reserve the right to amend my opinions accordingly
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 7 of 9 PageID #: 24072
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`Wirtgen America W 210 Fi is a cold planar machine that comprises a water reservoir mounted on
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`the frame of the cold planer machine and is configured to enclose water. Thus, my opinion on this
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`element remains unchanged despite Dr. Giles’ criticisms.
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`C.
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`“[E]stimate an amount of pressurized water that will be required to operate
`the primary rotor spray bank when it is determined that the primary rotor
`spray bank should be activated”
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`87.
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`In his Rebuttal Report, Dr. Giles opines “that the Accused Wirtgen America
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`Machines do not ‘estimate an amount of pressurized water that will be required to operate the
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`primary rotor spray bank when it is determined that the primary rotor spray bank should be
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`activated’ because the machines do not measure or otherwise determine the water flow. ’618 Patent
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`at Claims 1, 8.” (Id., ¶139). For at least the reasons detailed below, I disagree with Dr. Giles.
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`88.
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`First, nothing in the claims limits the invention to necessarily performing a direct
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`measurement of the water flow. Rather, the claims imply that the pressure is measured via the
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`“pressure sensor indicative of a pressure,” not that the water flow is measured. A POSITA would
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`understand that the inventors were concerned with supplying an adequate amount of water based
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`on the operating state of the machine. This supplying of water need not (but could) require direct
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`measurements in units of flow. The specification is silent on the specific calculation or units of
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`measure that must be used for estimating the amount of water needed, suggesting the inventors did
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`not intend to limit this term to a specific form of calculation based on a specific measurement such
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`as water flow. Indeed, rather than expressly calculating a flow rate of water needed to satisfy the
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`system’s requirements, a POSITA would understand that one could represent these needs as a
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`percentage of the water pump’s maximum capacity, i.e., maximum volume flow rate. Such a
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`percentage would still be correlated with a flow but would not necessarily be expressed units of
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`volume flow rate (e.g., gallons per minute). Rather, in this instance, the percentage is unitless and
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`flow rate units are implicitly or inherently estimated based on the maximum volume flow rate of
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 8 of 9 PageID #: 24073
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`signal are also indicative of changes in the pressure in the main spray manifold. Dr. Giles points
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`to nothing in the system that would sever this association.
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`117.
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`In sum, my opinion remains the same that the Accused Wirtgen America Products
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`practice this claim limitation. This is because, as I discussed in my opening report and above (as
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`well as Mr. Hausegger’s explanation of the source code with which I agree), the Wirtgen America
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`W 210 Fi includes an electronic controller that is disposed to maintain the desired main spray
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`manifold pressure by adjusting the pump signal based on the pressure signal as a primary control
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`parameter continuously during operation. Thus, my opinion on this element remains unchanged
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`despite Dr. Giles’ and Dr. Valerdi’s criticisms.
`IX. RESERVATION OF RIGHTS
`118. Although I have cited particular evidence in this report, I have done so to assist in
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`understanding my conclusions and the bases for them. This report does not discuss every piece of
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`evidence that could be used to support by conclusions. Accordingly, I may affirm, update, or
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`modify my opinions based on such other evidence as necessary.
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`119.
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`I may make additions or modifications to my conclusions in the future, based on
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`new evidence that is presented to me. For trial, I may prepare diagrams, charts, and other
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`demonstratives to illustrate my conclusions or the technology at issue.
`X. DECLARATION
`I declare that all statements made of my own knowledge are true and that all statements made on
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`information and belief are believed to be true, and that these statements were made with the
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`knowledge that willful false statements and the like are punishable by fine or imprisonment, or
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`both, under section 1001 of Title 18 of the United States Code.
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`Case 1:17-cv-00770-JDW Document 230-8 Filed 10/05/23 Page 9 of 9 PageID #: 24074
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`____________________
`July 7, 2023
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`_______________________
`___________________
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`Adam SoriniAdam Sorini
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`2111403.000 - 3220
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