Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 1 of 6 PageID #: 24541
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 1:17-cv-00770-JDW
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`JURY TRIAL DEMANDED
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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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`DECLARATION OF JOSEPH H. KIM IN SUPPORT OF WIRTGEN AMERICA, INC.’S
`OPPOSITION TO CATERPILLAR INC.’S MOTIONS TO EXCLUDE CERTAIN
`EXPERT TESTIMONY AND FOR SUMMARY JUDGMENT
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`I am an attorney with Sterne, Kessler, Goldstein & Fox P.L.L.C., and serve as counsel for Plaintiff
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`Wirtgen America, Inc. I submit this declaration in support of Plaintiff’s opposition to Caterpillar Inc.’s
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`motions to exclude certain expert testimony and for summary judgment. I have personal knowledge of
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`the matters stated in this Declaration and could testify to them competently if called upon to do so.
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`1.
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`Attached hereto as Exhibit A is a true and correct copy of an email thread that
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`was produced by Caterpillar with a starting Bates label CAT_00028678, with the subject line
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`“Caterpillar PM 620/622/820/822/825 Infringement of Wirtgen Patents,” between Eric
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`Engelmann and Paul Clark on June 16, 2017, where the earliest email is of Paul Clark
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`forwarding a June 16, 2017 email from Günter Hähn to Paul Clark.
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`2.
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`Attached hereto as Exhibit B is a true and correct excerpt of the transcript of the
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`Videotaped Deposition of Paul Clark, taken on January 17, 2018.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 1:17-cv-00770-JDW
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`JURY TRIAL DEMANDED
`
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`WIRTGEN AMERICA, INC.
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`
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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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`DECLARATION OF JOSEPH H. KIM IN SUPPORT OF WIRTGEN AMERICA, INC.’S
`OPPOSITION TO CATERPILLAR INC.’S MOTIONS TO EXCLUDE CERTAIN
`EXPERT TESTIMONY AND FOR SUMMARY JUDGMENT
`
`
`
`
`I am an attorney with Sterne, Kessler, Goldstein & Fox P.L.L.C., and serve as counsel for Plaintiff
`
`Wirtgen America, Inc. I submit this declaration in support of Plaintiff’s opposition to Caterpillar Inc.’s
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`motions to exclude certain expert testimony and for summary judgment. I have personal knowledge of
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`the matters stated in this Declaration and could testify to them competently if called upon to do so.
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`1.
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`Attached hereto as Exhibit A is a true and correct copy of an email thread that
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`was produced by Caterpillar with a starting Bates label CAT_00028678, with the subject line
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`“Caterpillar PM 620/622/820/822/825 Infringement of Wirtgen Patents,” between Eric
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`Engelmann and Paul Clark on June 16, 2017, where the earliest email is of Paul Clark
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`forwarding a June 16, 2017 email from Günter Hähn to Paul Clark.
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`2.
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`Attached hereto as Exhibit B is a true and correct excerpt of the transcript of the
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`Videotaped Deposition of Paul Clark, taken on January 17, 2018.
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`Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 2 of 6 PageID #: 24542
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`3.
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`Attached hereto as Exhibit C is a true and correct excerpt of the transcript of the
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`deposition of Nathan Just, taken on January 9, 2018.
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`4.
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`Attached hereto as Exhibit D is a true and correct excerpt of Wirtgen America’s
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`ITC hearing exhibit number CX-0493C, a Caterpillar document that was produced in Certain
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`Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067 (U.S.I.T.C.), by
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`Caterpillar with a starting Bates label CAT0124992.
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`5.
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`Attached hereto as Exhibit E is a true and correct excerpt of the transcript of the
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`Videotaped Deposition of Dario Sansone, taken on January 10, 2018.
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`6.
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`Attached hereto as Exhibit F is a true and correct excerpt of the transcript of the
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`Videotaped Deposition of Eric Engelmann, taken on January 12, 2018.
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`7.
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`Attached hereto as Exhibit G is a true and correct excerpt of a Caterpillar
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`document that was produced in Certain Road Milling Machines and Components Thereof, Inv.
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`No. 337-TA-1067 (U.S.I.T.C.), by Caterpillar with a starting Bates label CAT0087926.
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`8.
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`Attached hereto as Exhibit H is a true and correct excerpt of a Caterpillar
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`document that was produced in Certain Road Milling Machines and Components Thereof, Inv.
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`No. 337-TA-1067 (U.S.I.T.C.), by Caterpillar with a starting Bates label CAT0108406.
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`9.
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`Attached hereto as Exhibit I is a true and correct copy of a Caterpillar document
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`that was produced natively in Certain Road Milling Machines and Components Thereof, Inv. No.
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`337-TA-1067 (U.S.I.T.C.), by Caterpillar with Bates label CAT0087933.
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`10.
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`Attached hereto as Exhibit J is a true and correct excerpt of a Caterpillar
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`document that was produced by Caterpillar with a starting Bates label CAT-770_092522.
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`11.
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`Attached hereto as Exhibit K is a true and correct excerpt of a document that was
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`produced by Caterpillar with a starting Bates label CAT-770_072068.
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`Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 3 of 6 PageID #: 24543
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`12.
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`Attached hereto as Exhibit L is a true and correct excerpt of the Initial Expert
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`Report of Dr. Pallavi Seth, dated May 19, 2023.
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`13.
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`Attached hereto as Exhibit M is a true and correct copy of a Caterpillar
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`presentation titled, “GW 2 Cold Planer Accelerated Program PM73/75, PM105/106, PM210,
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`PM310/312/313, PM520, PM822/825, PM1122/1125/1138,” dated November 4, 2014, that was
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`produced natively by Caterpillar with Bates label CAT_00027867.
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`14.
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`Attached hereto as Exhibit N is a true and correct excerpt of the Reply Expert
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`Report of Dr. Pallavi Seth, dated July 7, 2023.
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`15.
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`Attached hereto as Exhibit O is a true and correct copy of a Caterpillar document
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`that was produced natively by Caterpillar with Bates label CAT0115298.
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`16.
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`Attached hereto as Exhibit P is a true and correct excerpt of a Caterpillar
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`document that was produced by Caterpillar with a starting Bates label CAT-770_026532.
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`17.
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`Attached hereto as Exhibit Q is a true and correct copy of a Caterpillar document
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`that was produced natively by Caterpillar with Bates label CAT0115869.
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`18.
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`Attached hereto as Exhibit R is a true and correct excerpt of a Caterpillar
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`presentation titled, Cold Planer NPI JSM Update,” dated July 2011, that was produced by
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`Caterpillar with a starting Bates label CAT0128313.
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`19.
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`Attached hereto as Exhibit S is a true and correct excerpt of Wirtgen America’s
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`ITC hearing exhibit number CX-0006C, the Direct Witness Statement of Dr. John Meyer
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 13, 2018.
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`20.
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`Attached hereto as Exhibit T is a true and correct excerpt of Wirtgen America’s
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`ITC hearing exhibit number CX-0004C, the Direct Witness Statement of John H. Lumkes
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`Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 4 of 6 PageID #: 24544
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`submitted in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
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`(U.S.I.T.C.), dated March 13, 2018.
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`21.
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`Attached hereto as Exhibit U is a true and correct excerpt of the Initial Expert
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`Report of Dr. John Meyer, dated May 19, 2023.
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`22.
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`Attached hereto as Exhibit V is a true and correct copy of a Wirtgen America
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`document that was produced natively by Wirtgen America with Bates label WA-1718232.
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`23.
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`Attached hereto as Exhibit W is a true and correct copy of an email thread with
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`the subject line “Wirtgen America, Inc. v. Caterpillar, Inc., No. 1:17-cv-00770-JDW-MPT:
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`Wirtgen’s Responses and Objections to CAT’s 30(b)(6) Notice of Deposition,” between
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`Caterpillar and Wirtgen America starting on February 1, 2023, to March 16, 2023.
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`24.
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`Attached hereto as Exhibit X is a true and correct excerpt of the transcript of
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`Videotaped Deposition of James D. Domanus, taken on January 5, 2018.
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`25.
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`Attached hereto as Exhibit Y is a true and correct excerpt of the transcript of
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`Videotaped Deposition of Richard W. Klopp, taken on August 17, 2023.
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`26.
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`Attached hereto as Exhibit Z is a true and correct excerpt of the Opening Expert
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`Report of Richard W. Klopp, Ph.D., P.E., F.A.S.M.E., dated May 19, 2023.
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`27.
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`Attached hereto as Exhibit AA is a true and correct copy of a webpage printout of
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`the definition of “wheel,” from Merriam-Webster, https://www.merriam-
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`webster.com/dictionary/wheel, printed on October 16, 2023.
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`28.
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`Attached hereto as Exhibit BB is a true and correct excerpt of Caterpillar’s Parts
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`Manual for the PM620 Cold Planer, bearing publication number KEBP6265-10 and publication
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`date of January 2017, that was produced by Caterpillar with a starting Bates label
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`CAT-770_004719.
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`Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 5 of 6 PageID #: 24545
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`29.
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`Attached hereto as Exhibit CC is a true and correct excerpt of the Rebuttal Expert
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`Report of Dr. Andrew W. Smith, P.E., dated June 16, 2023.
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`30.
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`Attached hereto as Exhibit DD is a true and correct excerpt of the Initial Expert
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`Report of Dr. Christopher Rahn, dated May 19, 2023.
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`31.
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`Attached hereto as Exhibit EE is a true and correct excerpt of a certified copy of
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`the file history for U.S. Patent No. 7,946,788, and was produced by Wirtgen America with a
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`starting Bates label WA-0001860.
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`32.
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`Attached hereto as Exhibit FF is a true and correct excerpt of Caterpillar’s
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`Operation and Maintenance Manual of the Cat® Grade and Slope for Cold Planers, bearing
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`publication number M0089910-02 and publication date of January 2022, that was produced by
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`Caterpillar with a starting Bates label CAT-770_091773.
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`33.
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`Attached hereto as Exhibit GG is a true and correct excerpt of the transcript of
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`Videotaped Deposition of Nathan L. Mashek, taken on January 4, 2018.
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`34.
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`Attached hereto as Exhibit HH is a true and correct excerpt of the transcript of
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`Deposition of John Meyer, Ph.D., taken on August 17, 2023.
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`35.
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`Attached hereto as Exhibit II is a true and correct excerpt of the transcript of
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`Deposition of Christopher David Rahn, Ph.D., taken on August 14, 2023.
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`36.
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`Attached hereto as Exhibit JJ is a true and correct excerpt of the Initial Expert
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`Report of Dr. John H. Lumkes, dated May 18, 2023.
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`37.
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`Attached hereto as Exhibit KK is a true and correct copy of a webpage printout
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`of the definition of “when,” from Merriam-Webster, https://www.merriam-
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`webster.com/dictionary/when, printed on October 17, 2023.
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`Case 1:17-cv-00770-JDW Document 245 Filed 10/19/23 Page 6 of 6 PageID #: 24546
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`38.
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`Attached hereto as Exhibit LL is a true and correct excerpt of the Rebuttal Expert
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`Report of Dr. Christopher Rahn, dated June 16, 2023.
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`39.
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`Attached hereto as Exhibit MM is a true and correct excerpt of the transcript of
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`Video Deposition of Eric Engelmann, Volume II of II, taken on March 17, 2023.
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` I
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` declare under penalty of perjury under the laws of the United States that the foregoing is
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`true and correct.
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`Executed this 19th day of October 2023, at Washington, D.C.
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`/s/ Joseph Kim
`Joseph H. Kim
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