Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 1 of 10 PageID #: 24803
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`Exhibit Z
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 2 of 10 PageID #: 24804
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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 RICHARD W. KLOPP, Ph.D., P.E., F.A.S.M.E.
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`2111403.000 – 0516
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 3 of 10 PageID #: 24805
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`vii. Claim [15.pre]: Method in accordance with claim 11,
` At a minimum, ’641 Patent claim 15 is invalid because claim 11 from which it
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`depends is anticipated or obvious in light of prior art and I incorporate my analysis by reference
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`here as if set forth in its entirety. (See ¶¶419-439.)
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`viii.
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`[15.1] characterized in that the milling drum (12) is raised
`by a pre-determined amount that is larger than a
`minimum distance between the milling drum (12) and the
`ground surface (2), and
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`I inspected, observed, and recorded the prior art PM-465 machine performing
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`operations characterized by the milling drum being in the fully raised position, i.e., raised by a
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`predetermined amount more than a minimum distance above the ground, when preparing to travel
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`backward with the milling drum continuing to rotate under engine power.409, 410
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`It is also my opinion that the PM-465 machine itself discloses the actual
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`performance of this step. This is because PM-465 is designed to operate in a manner that practices
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`this limitation. In my view, any use of the PM-465 for its intentional purpose would have practiced
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`this step. In other words, a PHOSITA would understand that the step is inherently disclosed
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`through any standard operation of the machine in accordance with its intended purposes.
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`Moreover, as I discussed above, that the PM-465 was sold for many years strongly implies that at
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`least one customer used the machine before the priority date. However, even if this is insufficient
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`to show anticipation, in my opinion the PM-465 at least renders the claim obvious because it would
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`have been obvious to a PHOSITA to use the PM-465 in its intended manner (i.e., to perform this
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`step).
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`409 EXPONENT_0000945.
`410 I also incorporate by reference and reserve the right to rely on the discussion in Section VI.
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 4 of 10 PageID #: 24806
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`descending the drum prematurely while backing up the machine to take another pass. In both of
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`these scenarios, the deviation fell below a pre-determined distance between the milling drum and
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`the ground surface. A PHOSITA would recognize that side-plate sensors and ultrasonic non-
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`contact grade sensors were already known on PM-465 cold planers, and could be substituted for
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`(or used in addition to) the kickback ski. Such an arrangement would have been obvious to try and
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`would not have required significant experimentation, because both the sensing and logic already
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`existed on the machines.
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` Accordingly, it is my opinion that, if the PM-465 cold planer did not anticipate
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`claim 11 of the ’641 Patent, it was obvious over PM-465 and the knowledge of a PHOSITA.
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`vii. Claim [15.pre]: Method in accordance with claim 11,
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` At a minimum, ’641 Patent claim 15 is invalid because claim 11 from which it
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`depends is anticipated or obvious in light of prior art as discussed above as well as for the reasons
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`discussed below as to any additional limitations. See ¶¶419-438, 447-465.
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`viii.
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`[15.1] characterized in that the milling drum (12) is raised
`by a pre-determined amount that is larger than a
`minimum distance between the milling drum (12) and the
`ground surface (2), and
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`I inspected, observed, and recorded the prior art PM-465 machine performing
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`operations characterized by the milling drum being in the fully raised position, i.e., raised by a
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`predetermined amount, when preparing to travel backward with the milling drum continuing to
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`rotate under engine power.
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` To the extent the PM-465 cold planer is deemed not to practice claim element
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`[15.1], it would have been within the knowledge of a PHOSITA to do so, motivated by a desire to
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`2111403.000 – 0516
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 5 of 10 PageID #: 24807
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` Accordingly, it is my opinion that claim 11 of the ’641 Patent was obvious over
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`PM-565 and the knowledge of a PHOSITA.
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`v.
` At a minimum, ’641 Patent claim 15 is invalid because claim 11 from which it
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`Claim [15.pre]: Method in accordance with claim 11,
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`depends is anticipated or obvious in light of prior art as well as for the reasons discussed below as
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`to any additional limitations.432
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`vi.
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`[15.1] characterized in that the milling drum (12) is raised
`by a pre-determined amount that is larger than a
`minimum distance between the milling drum (12) and the
`ground surface (2), and
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`I inspected, observed, and recorded the prior art PM-565 machine performing
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`operations characterized by the milling drum being in the fully raised position, i.e., raised by a
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`predetermined amount, when preparing to travel backward with the milling drum continuing to
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`rotate under engine power (Figure 108, Figure 109).
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` To the extent the PM-565 cold planer is deemed not to practice claim element
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`[15.1], it would have been within the knowledge of a PHOSITA to do so, motivated by a desire to
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`mitigate the risk of the drum being too low and striking the ground or an obstacle such as a pushed-
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`up berm, and motivated by the ease of transplanting the logic from the PM-465 to the PM-565.
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` Therefore, this claim limitation would have been obvious to a PHOSITA in light of
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`the PM-565 and the knowledge of PHOSITA.
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`432 I also incorporate by reference and reserve the right to rely on the discussion in Section VI.
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 6 of 10 PageID #: 24808
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`vii. Claim [15.pre]: Method in accordance with claim 11,
` At a minimum, ’641 Patent claim 15 is invalid because claim 11 from which it
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`depends is anticipated or obvious in light of prior art.
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`viii.
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`[15.1] characterized in that the milling drum (12) is raised
`by a pre-determined amount that is larger than a
`minimum distance between the milling drum (12) and the
`ground surface (2), and
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`I inspected, observed, and recorded both prior art PM-565 and PM-465 machines
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`performing operations characterized by the milling drum being in the fully raised position, i.e.,
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`raised by a predetermined amount, when preparing to travel backward with the milling drum
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`continuing to rotate under engine power (Figure 105, Figure 108). To the extent the PM-465 cold
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`planer or PM-565 cold planer are deemed not to practice claim element [15.1], it would have been
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`within the knowledge of a PHOSITA to do so, motivated by a desire to mitigate the risk of the
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`drum being too low and striking the ground or an obstacle such as a pushed-up berm. Thus, this
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`claim limitation would have been obvious to a PHOSITA in light of the PM-465 and PM-565 in
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`view of Lent ’121 and the knowledge of PHOSITA.
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`ix.
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`[15.2] in that a sensing device measuring towards the
`ground surface (2) takes a lower limit position which
`corresponds to a pre-determined distance or to a
`minimum distance to be maintained between the milling
`drum (12) and the ground surface (2).
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`I observed the PM-465 machine using its kickback ski to sense toward the ground
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`surface and detect a minimum distance to be maintained between the milling drum and the ground
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`surface and below which distance the drum would be declutched (Figure 105, Figure 106,
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`Figure 107).
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` Further, a PHOSITA would have considered it a simple matter to combine other
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`sensing means existing as of May 22, 2006, such as ultrasound toward the ground or side-plate
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 7 of 10 PageID #: 24809
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`pass. A PHOSITA would recognize that other ground-distance sensors already known on cold
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`planers, such as direct ultrasound, wheel, and side-plate sensors, could be utilized in the same way.
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`Such an arrangement would have been obvious to try and would not have required significant
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`experimentation, because both the sensing and logic already existed on the machines.
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` For example, a PHOSITA would have considered it a simple matter to combine
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`sensing whether the cutting drum was rotating, and the machine was traveling backward in the
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`“jump and return to grade” functionality of Gfroerer ’648 to trigger logic that declutched the drum,
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`re-jumped the cutting drum (further increasing its ground height), or issued an alarm. A PHOSITA
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`would have known that such logic was straightforward based on the disclosures in Lent ’121.470 A
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`PHOSITA would have been motivated by the more direct sensing afforded by, e.g., ultrasonic
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`sensors and side-plate sensors, as compared to a kickback ski.
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` Accordingly, it is my opinion that ’641 Patent claim 11 was obvious in view of PM-
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`465 or PM-565 and the knowledge of a PHOSITA or in combination with Lent ’121, Gfroerer
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`’648, or Breidenbach ’056.
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`vii. Claim 15[pre]: Method in accordance with claim 11,
` At a minimum, ’641 Patent claim 15 is invalid because claim 11 from which it
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`depends is anticipated or obvious in light of prior art.
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`viii.
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`[15.1] characterized in that the milling drum (12) is raised
`by a pre-determined amount that is larger than a
`minimum distance between the milling drum (12) and the
`ground surface (2), and
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`I inspected, observed, and recorded both prior art PM-565 and PM-465 machines
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`performing operations characterized by the milling drum being in the fully raised position, i.e.,
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`470 Lent ’121, 7:5-7
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`2111403.000 – 0516
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 8 of 10 PageID #: 24810
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`raised by a predetermined amount, when preparing to travel backward with the milling drum
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`continuing to rotate under engine power.471
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`In addition, the “jump and return to grade” functionality disclosed in Gfroerer ’648
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`involved raising the milling drum above a minimum distance to avoid an obstacle such as a
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`manhole cover or railroad track.472 Moreover, as discussed at ¶¶163-176, the capability of
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`measuring the distance between the drum and ground surface had been disclosed in Gfroerer ’648
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`and Breidenbach ’056, and the logic and control processor to act on the measurements was evident
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`from Lent ’121.
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`ix.
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`[15.2] in that a sensing device measuring towards the
`ground surface (2) takes a lower limit position which
`corresponds to a pre-determined distance or to a
`minimum distance to be maintained between the milling
`drum (12) and the ground surface (2).
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` This claim limitation would have been obvious to a PHOSITA in light of the PM-
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`465 and PM-565 in view of Lent ’121, Gfroerer ’648, or Breidenbach ’056 and the knowledge of
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`PHOSITA.
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` The “jump and return to grade” functionality disclosed in Gfroerer ’648 implies
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`one or more sensing devices measuring the ground surface so that the machine logic knows the
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`predetermined distance to jump. Moreover, I observed the PM-465 and PM-565 machines using
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`their kickback skis to sense toward the ground surface and detect a minimum distance to be
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`maintained between the milling drum and the ground surface and below which distance the drum
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`would be declutched.
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`471 EXPONENT_0000945; EXPONENT_0000780, EXPONENT_0005569.
`472 Gfroerer ’648, 1:26-38, 2:31-44.
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 9 of 10 PageID #: 24811
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`Figure 115. Image from April 2023 inspection of a PM-465 cold planer with the moldboard
`indicated.475
` Accordingly, it is my opinion that ’641 Patent claim 17 was obvious in view of PM-
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`465 or PM-565 and the knowledge of a PHOSITA or in combination with Lent ’121, Gfroerer
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`’648, or Breidenbach ’056.
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`iii. Claim 18[pre]: Method in accordance with claim 15,
` At a minimum, ’641 Patent claim 18 is invalid because claims 15 and 11 from which
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`it depends are anticipated or obvious in light of prior art.
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`iv.
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`[18.1] characterized in that a side plate (24) arranged at
`the side next to the milling drum (12) or a hood (18)
`enclosing the milling drum (12) is used as a sensing device.
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` This claim limitation would have been obvious to a PHOSITA in light of the PM-
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`465 and PM-565 in view of Lent ’121, Gfroerer ’648, or Breidenbach ’056 and the knowledge of
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`PHOSITA.
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`475 EXPONENT_0000850.
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`Case 1:17-cv-00770-JDW Document 245-26 Filed 10/19/23 Page 10 of 10 PageID #: 24812
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`milling drum (12) and the ground surface (2),” or is merely having the capability to do so
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`sufficient?
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`In view of these ambiguities, claim 11 of the ’641 Patent fails to provide a
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`PHOSITA with reasonable certainty over the claim’s meaning. For purposes of my invalidity
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`analysis, I have considered both potential interpretations. My opinions are the same under either
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`interpretation.
`XI. Conclusion
` For at least the reasons stated above, it is my opinion that all asserted claims of the
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`RE268 and ’641 Patents are obvious or anticipated in light of physical prior art PM-465 and PM-
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`565 machines and associated documentation, the knowledge of a PHOSITA, and prior art patents.
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`It is also my opinion that the asserted claims of the RE268 Patent were broadened during reissue,
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`that the asserted claims are indefinite, and that the ’641 Patent is ambiguous due to mixing method
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`and apparatus claiming.
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`I 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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`Richard W. Klopp, Ph.D., P.E., F.A.S.M.E.
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