Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 1 of 6 PageID #: 24826
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`Exhibit CC
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`Exhibit CC
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`Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 2 of 6 PageID #: 24827
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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. C.A. No. 17-770-JDW
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`REBUTTAL EXPERT REPORT OF DR. ANDREW W. SMITH, P.E.
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`Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 3 of 6 PageID #: 24828
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`In his opening report, Dr. Rahn identifies the indication and setting devices as recited in
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`Claim 1[d] of the ’788 Patent as the user interface for the display screens on each of the
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`PM300, PM600, and PM800 milling machines and identifies the purported current actual
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`values of the sensed operating parameters as the green digits shown in Figure 18.122
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`Figure 18:
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`An annotated image of the user interface of the display screen from a Caterpillar
`operating manual, relevant to the PM600/PM800 machines.123 Dr. Rahn identifies
`the values in red circles as the “current actual values” measured by a plurality of
`selectable sensors, which is in conflict with his previous opinions as compared to
`the findings of Dr. Valerdi. Dr. Rahn makes similar identifications for the
`PM300.124
`In its Markman ruling, the Court construed the term “current actual value” as “currently
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`measured actual value.”125 I apply that meaning in my Opening Report, as well as this
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`report.
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`Dr. Rahn, in his declaration in support of Wirtgen America’s claim construction position
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`explains what his understanding of “currently measured actual value” is (also see Figure
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`19):
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`122 Rahn Opening Report, ¶¶323-349.
`123 CAT-770_040216.
`124 Rahn Opening Report, ¶346.
`125 Dkt. 168.
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`2111403.002 - 1731
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`Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 4 of 6 PageID #: 24829
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`“Based on the specification, a skilled artisan would have understood that the
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`‘currently measured actual value’ is the value indicated by the indication and setting
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`device and also used by the controller to control grade and slope.”126
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`Accordingly, by Dr. Rahn’s definition, the current actual value must be the value which
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`is both displayed by the indication and setting device (in the case of the Accused
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`Products, the user interface of the display screen is alleged to be an indication and setting
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`device) as well as the value used for controlling the grade and slope.
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`However, Wirtgen America’s code review expert Dr. Ricardo Valerdi opines that this is
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`not how the Accused Products function:127
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`“To understand how each of these requests work, it’s important to also appreciate
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`what is displayed on the operator’s HMI is different than the values needed to
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`control whether the milling machine is on-grade. For example, as discussed above,
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`the HMI merely displays the target in relative terms and the current measurement
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`of the machine relative to that target. But to calculate whether the machine is on-
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`grade those values need to be converted to values that are relative to the sensors’
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`measured values.”128
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`126 Declaration of Christopher D. Rahn, Ph.D. in Support of Plaintiff/Counterclaim-Defendant Wirtgen America
`Inc.’s Opening Claim Construction Brief, ¶55.
`127 In Dr. Valerdi’s opening report, he refers to the “HMI” which he does not define but would be understood by a
`PHOSITA as a “human machine interface”, comporting with the user interface of the display screen in the
`Accused Products.
`128 Opening Expert Report of Dr. Ricardo Valerdi, ¶34.
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`Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 5 of 6 PageID #: 24830
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`Figure 19:
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`A comparison of Dr. Rahn’s definition of “current actual value” compared to Dr.
`Valerdi description of what the Caterpillar systems do.
`Dr. Rahn does not provide any analysis which demonstrates that the values displayed on
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`the user interface are indeed the same values that are used for controlling the machine
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`whereas Dr. Valerdi opines that they are, in fact, not the same. Accordingly, it is not clear
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`from Dr. Rahn’s analysis (compared to Dr. Valerdi’s analysis) that the user interfaces of
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`the Accused Products display the current actual values as defined by Dr. Rahn.
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`Accordingly, Dr. Rahn has not reliably demonstrated that the Accused Products practice
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`the limitations of Claim 1[d].
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`Furthermore, Dr. Rahn’s assertions regarding infringement of Claim 1[d] under the
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`doctrine of equivalents similarly do not address the contradiction between himself and Dr.
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`Valerdi; accordingly, Dr. Rahn has also not demonstrated that the Accused Products
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`perform substantially the same function in substantially the same way to obtain
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`substantially the same result as recited in Claim 1[d]. Therefore Dr. Rahn has failed to
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`demonstrate that the Accused Products infringe Claim 1[d] either directly or under the
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`doctrine of equivalents.
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`2111403.002 - 1731
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`Case 1:17-cv-00770-JDW Document 245-29 Filed 10/19/23 Page 6 of 6 PageID #: 24831
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`controller (by e.g., activating touch screen buttons via a separate screen) to change this
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`relative inclination.
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`In this case, a user could select a variety of relative inclinations to set the machine frame
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`to, as well as select an appropriate error band which (if the machine travelled outside of
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`this inclination error band) the user would be notified and queried for further instructions
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`(i.e., to manually establish the machine’s parallel orientation again or not). Such
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`information would be useful, e.g., as an alert to the operator that the ground inclination was
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`unexpectedly changing, for instance.
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`In his opening report, Dr. Lumkes opines that there were “Advantages of Parallel to
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`Surface” capabilities which, in his opinion were acknowledged by Caterpillar. However,
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`Dr. Lumkes does not opine that the automatic establishing of said parallel orientation itself
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`was the recognized feature; accordingly, to the extent that there was a perceived user
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`preference for parallel to surface orientation capabilities, Dr. Lumkes (nor, to my
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`knowledge, Wirtgen America) has not demonstrated that the preference could not have
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`been satisfied by achieving parallel orientation automatically, as opposed to manually. This
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`notwithstanding, I am not aware of any information provided by Wirtgen America in this
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`matter which demonstrates that any sales were tied directly to the automatic establishing
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`of parallel orientation as recited in the ’972 Patent.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on June 16, 2023, at Chicago, IL.
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`Andrew W. Smith, Ph.D., P.E.
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`2111403.002 - 1731
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`90
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