Case 1:17-cv-00770-JDW Document 245-36 Filed 10/19/23 Page 1 of 13 PageID #: 24892
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`Exhibit JJ
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`CATERPILLAR INC.
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`v.
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`Defendant/Counterclaim-Plaintiff.
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`Case 1:17-cv-00770-JDW Document 245-36 Filed 10/19/23 Page 2 of 13 PageID #: 24893
`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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`C.A. No. 1:17-cv-00770-JDW
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`INITIAL EXPERT REPORT OF DR. JOHN H. LUMKES
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`Case 1:17-cv-00770-JDW Document 245-36 Filed 10/19/23 Page 3 of 13 PageID #: 24894
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`Claim No.
`’309 Patent,
`claim 29
`’530 Patent,
`claim 2
`’972 Patent,
`claim 1
`
`’530 Patent,
`Claim 1
`
`’972 Patent,
`Claim 1
`
`Claim Term(s)
`“are adjusted in height in the same direction
`and in the opposite direction”
`“a controller”
`
`Agreed Construction
`“adjusted in height similarly and
`inversely”
`“an electronic controller”
`
`“each lifting position sensor being coupled
`with elements of one of the lifting columns,
`which elements are capable of being
`displaced
`relative
`to one another
`in
`accordance with the lifting position of the
`lifting column in such a manner that a signal
`including information on a current lifting
`position of the lifting column is produced by
`the lifting position sensor”
`
`“ground engaging sensor”
`
`“each lifting position sensor is
`coupled to two or more components
`within its respective lifting column,
`these components are capable of
`being displaced relative to one
`another such that their displacement
`reflects the lifting position of the
`lifting column, the lifting position
`sensor generates a signal
`that
`contains
`information about
`the
`lifting position of the column based
`on
`the displacement of
`the
`components”
`“A sensor that comprises a sensing
`element that contacts the ground
`and an element that produces a
`signal indicating a position of the
`sensing element”
`
`X.
`
`Accused Products Overview
`
`91.
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`As discussed further below, Caterpillar’s large milling machines (the PM600 and
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`PM800 series) and rotary mixers (RM600 and RM800 series) infringe the Asserted Patents.
`
`A.
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`Caterpillar’s Large Milling Machines
`1.
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`Caterpillar’s Development of the Accused PM600 and PM800 Products
`(a)
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`Caterpillar tore down and tested Wirtgen’s milling machines in
`an effort to catch up with Wirtgen.
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`92.
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`Prior to developing its new PM600 and PM800 machines, Caterpillar had “limped
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`in the [cold planing] space for quite some time,” stated Caterpillar Paving’s General Manager Paul
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`Clark.Clark Dep. 71:1-73:11, 337-TA-1067, Jan. 17, 2018. The major reasons for this was a lack
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`of development: “the major reason is the PM200 and the PM102 for example were very old
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`models” and that Caterpillar “hadn’t updated the products like they needed to be updated.” Id.
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`Similarly, Nathan Just, Caterpillar’s Worldwide Marketing Supervisor, likewise testified that in
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`2014 “[w]e saw our machines as outdated.” Just Dep. 182, Mar. 8, 2023.
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`93.
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`Because of this lag, Caterpillar started its New Product Introduction (NPI)
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`development of the PM600, which included a Caterpillar process referred to as Low Cost Producer.
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`Engelmann Hearing Tr. 119:4-10, 337-TA-1067, Apr. 19, 2018; CAT0052885-946 at 906-908.
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`94.
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`Caterpillar uses its Low Cost Producer process to perform competitive analysis and
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`develop a product that is low cost. Engelmann Hearing Tr. 119:4-10, 337-TA-1067, Apr. 19, 2018;
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`see also CAT0052885-946, at 906-908. Caterpillar’s NPI Manual explains that “[t]he Low Cost
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`Producer Process is an essential step in achieving optimum product cost and understanding our
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`major competitors’ strengths and weaknesses and should be standard work for all product groups.”
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`CAT0100768-860 at 773.
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`95.
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`The General Overview of LCP section of this manual states that “[t]he diagram
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`below shows the LCP Process involves Competitive Product Analysis for key competitors,” and
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`that diagram includes a step titled “Cost Reduction Efforts – Teardowns.” CAT0100768-860 at
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`773. The manual further explains that “[a] teardown may be needed for multiple reasons” one of
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`which is a “technology gap” and that while certain gaps require only “minimal disassembly,” “[i]n
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`order to obtain the detailed LCP cost targets amongst other significant benefits, a full teardown is
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`required.” CAT0100768 at 0805. Caterpillar’s manual also indicates that the purpose of such
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`teardowns “is not only to generate ideas that mimic the competitive components in both cost and
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`quality, but also those out-of-the-box ideas that allow us to surpass the competition.” See
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`CAT0100768-860 at 814.
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`96.
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`Caterpillar conducted customer surveys that showed the popularity of Wirtgen’s
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`
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`milling machine features. See CAT0115869, CAT0115298, CAT0088682.
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`97.
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`Caterpillar “tore down” Wirtgen machines, including a W210 milling machine and
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`a W120F milling machine. See, e.g., CAT0052885-946 at 906-908; Domanus Dep. 23:18-28-10,
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`31:4-33:10, 34:2-35:4, 38:11-42:9 337-TA-1067 Jan. 5 2018(discussing CAT0052885); Healy
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`Dep. 98:12-100:11 337-TA-1067 Jan. 11 2018 (discussing CAT0052907); Engelmann Hearing Tr.
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`120:18-127:22, 337-TA-1067, Apr. 19, 2018 (discussing CAT0052907); CAT0076323-6330;
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`CAT0098125.) Photos and videos from the teardown show the extent to which Caterpillar
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`disassembled the Wirtgen machines. See CAT-770_072997 – CAT-770_073242. And Caterpillar
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`cataloged each component in an online catalog system. CAT-770_063227 (VCCD catalog landing
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`page); CAT-770_063293 – CAT-770_063321 (W120F assembly catalogs); CAT-770_063323 –
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`CAT-770_063355 (W210i assembly catalogs). Caterpillar scrutinized nearly every aspect of the
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`Wirtgen machines including the hydraulic system and associated coupling features. See
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`Engelmann Dep. 67:3 – 72:25 Mar. 16, 2023; see Steffen Dep. 35:21 – 39:4. Not only did
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`Caterpillar catalog and photograph each Wirtgen component, Caterpillar created CAD drawings
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`of these components. Engelmann Hearing Tr. 120:4-122:4 337-TA-1067, Apr. 19, 2018;
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`CAT0138792–CAT0159720 (CAD Drawings of Wirtgen Machines).
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`98.
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`Caterpillar also closely examined the configuration and operation of Wirtgen’s
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`hydraulic suspension and grade control worked. CAT-770_072074 (discussing advantages of
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`Wirtgen’s systems). CAT-770_072063 (summary of findings); CAT-770_072740 (summary of
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`findings); CAT-770_072777 (schematics and summary of Wirtgen’s system); CAT-770_073363
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`(schematics and summary of Wirtgen’s system and identified patents); Steffen Dep. Tr. 265:5-
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`272:3. For example, Caterpillar electronically tapped into the control signals for Wirtgen’s grade
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`control system while performing numerous operational tests. CAT-770_073246 (summary of tests
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`performed on Wirtgen W210 machine); CAT-770_072776 (table of testing channels); CAT-
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`770_073245 (summary of test observations); CAT-770_073252 – CAT-770_073341 (test data);
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`see also Engelmann Dep49:14 – 50:15 Mar. 16, 2023 (admitting to operating Wirtgen machines).
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`99.
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`Caterpillar generated 1,128 ideas as a result of the teardowns of Wirtgen’s
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`machines. See, e.g., Domanus Dep. 38:11-42:9 337-TA-1067 Jan. 5, 2018; see also Healy Dep.
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`98:12-100:11 337-TA-1067 Jan. 11 2018; Engelmann Hearing Tr. 120:18-127:22 337-TA-1067
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`Apr. 19 2018; Responses to Wirtgen America’s 2nd Set of Requests for Admissions, Nov. 3, 2017,
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`Response to RFA Nos. 800, 1262, 1264 (admitting the purchase, custody, and reverse-engineering
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`of a Wirtgen America domestic industry product); Responses to Wirtgen America’s 3rd Set of
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`Requests for Admissions, Nov. 27, 2017, Response to RFA Nos. 1514, 1515, 1516, 1517, 1518,
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`1519 (admitting the disassembly, modeling, and reverse-engineering of a Wirtgen America
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`machine for the comparison to a Caterpillar machine).
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`(b)
`
`Caterpillar identified Wirtgen’s floating hydraulic suspension
`as an important feature needed to catch-up with Wirtgen.
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`100. A Caterpillar presentation from February 2011, comparing Caterpillar’s then-
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`current milling machines with a Wirtgen W 210, identified several features as “catch-up” features,
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`meaning “a feature that would get [Caterpillar] equal to competition.” ITC 1067 Hearing Tr.
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`(Engelmann) 135:8-139:15. One of those was Wirtgen’s four-fold floating axle, which I refer to
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`as a floating hydraulic suspension. Engelmann Hearing Tr. 337-TA-1067 Apr. 19 2018, at 146:10-
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`151:20 (discussing Exhibit 5, CAT0116678-848 at 784); Engelmann Hearing Tr. 135:8-139:15
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`337-TA-1067 Apr. 19 2018; see also Domanus Dep. 161:1-162:1 337-TA-1067, Jan, 5 2018; Rife
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`Dep. 132:2-11, 211:5-212:18 Feb. 27, 2023; CAT0117240-71, at 44; see also Engelmann Hearing
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`Tr. 146:10-151:20 337-TA-1067 Apr. 19 2018; CAT0117240-71 at 44; CAT-770_039528
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`(identifying ride control as an “A” priority machine requirement).
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`
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`CAT0117240 at 7244; see also CAT-770_073363 at 368. See Steffen Dep. (Feb. 28, 2023) at 143:5
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`– 19 ([Seth Ogden]: “So you were responsible for the four-fold floating axle feature with respect
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`to the PM600; correct?” [Craig Steffen] “Yes.” [Ogden]: “And that four-fold floating axle feature
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`is what ultimately became referred to within Caterpillar as ride control; is that right?” … [Steffen]:
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`“Yes, I believe it is.”). Mr. Engelmann reviews patents as part of his work for Caterpillar and
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`before this investigation he was aware that Wirtgen had patents relating to the four-way floating
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`axle. Engelmann Hearing Tr.170:8-21, 172:20-173:3, 337-TA-1067, Apr. 19 2018.
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`(c)
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`Caterpillar identified Wirtgen’s elevation control, including
`intelligent leg control and parallel to surface features as an
`important feature needed to catch-up with Wirtgen.
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`101. As discussed above, Caterpillar identified several “catch-up” features. One of those
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`was the “parallel-to-surface auto-leveling technology.” Engelmann Dep. at 135:8-139:15, 337-TA-
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`1067, Jan. 12, 2018; CAT0116678-848 at 784; see also CAT-770_039528 (parallel to surface as
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`machine requirement and assigning this requirement an “A” priority). Caterpillar “trade-off
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`analysis” identifies the “Elevation Control – Parallel to Surface feature” as requiring four leg
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`sensors, two moldboard sensors, and harnesses, and states that the PM200 does not have this
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`feature while Wirtgen America’s W210 does:
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`CAT00117242 (showing a picture of Wirtgen America’s leg position sensing cylinder).
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`102. Another Caterpillar document stated that “Caterpillar needs to [sic] this machine to
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`be successful to hold ground with competition” and listed among the “Market Requirements” for
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`the PM600 to “Support Position Sensing Cylinders in all for [sic] machine legs” which (1)
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`“Provides method to remember scratch point based on leg positions” and (2) “Allows integration
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`with ‘All Raise’ and ‘All Lower’ machine features.” CTCT000543 at 47-48.
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`2.
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`Caterpillar’s Milling Machine Series, Models, and Builds
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`103. Caterpillar manufactures, sells, offers to sale, uses, and imports two categories of
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`milling machines—large milling machines and small milling machines. Each of these categories
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`is discussed further below.
`
`(a)
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`Caterpillar’s PM600 & PM800 Series Large Milling Machines
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`104. Caterpillar’s large milling machines are sometimes referred to as half-lane milling
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`machines because they can mill a half-lane of traffic in one pass. Caterpillar’s large milling
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`machines compose two series: the PM600 series and the PM800 series. The difference between
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`these two series, which is largely horsepower, are not material to infringement of the Asserted
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`Patents. See Joint Stipulation Regarding Representative Accused Products, April 12, 2023.
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`105. Within the PM600 series, Caterpillar offers multiple models. For example, the
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`PM600 series includes the PM620 model and PM620 model, and the PM800 series includes the
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`PM820 model, the PM822 model, and the PM825 model. Though there are some differences
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`between these models with respect to each model’s respective weight, dimensions, and milling
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`widths, these differences are not material to infringement of the Asserted Patents. See Joint
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`Stipulation Regarding Representative Accused Products, April 12, 2023.
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`106. Caterpillar has also developed multiple versions of the Accused Products.
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`Caterpillar identifies these versions as “builds,” namely, build 01A, build 02A, build 02B, and
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`build 02C. Many of the differences between the builds are not material to infringement of the
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`Asserted Patents. However, Caterpillar has made a few changes that are worth noting.
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`377.
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`I understand that copying of a competitor’s product is also an objective indicia of
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`non-obviousness. This can be shown through direct evidence,such as the infringer’s disassembling
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`of a patented machine, photographing it features, and using the photograph as a blueprint. It can
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`also be shown through indirect evidence, such access and substantially similarity to the patented
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`product.
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`A.
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`Technical Opinions Related to Copying
`1.
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`’309 Patent—Floating Hydraulic Suspension
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`378. Wirtgen milling machines, including those that existed before the Accused Ride
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`Control Machines were developed, had a fully floating hydraulic suspension in which each leg
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`cylinder was coupled to the adjacent leg cylinders. Wirtgen’s fully floating hydraulic suspension
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`practices the Asserted Claims of the ’309 Patent. See, e.g., Final Initial Determination, ITC Inv.
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`No. 337-TA-1067 (October 31, 2018), at 80 – 94 (finding Wirtgen machines practice the ’309
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`patent); WA-1718232 (identifying machines that practice the ’309 patent).
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`379. As I discussed above, Caterpillar acquired two Wirtgen machines, including one
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`large Wirtgen milling W210i, tested these machines, and then tore down and cataloged every
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`component of these machines. Before this testing and tear down, Caterpillar’s milling machines
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`did not include an analogous feature to Wirtgen’s full floating hydraulic suspension. CAT0117240
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`at 7244. After this tear down and testing, Caterpillar designed the ride control feature that was
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`implemented in the Accused Ride Control Machine.
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`380.
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`In my opinion, Caterpillar’s ride control feature is substantially identical to
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`Wirtgen’s floating hydraulic suspension. In its own internal literature when comparing its
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`machines with Wirtgen’s, Caterpillar equates its ride control feature to Wirtgen’s floating
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`hydraulic suspension. See, e.g., CAT_00055787 at 5793. Caterpillar even noted that it couldn’t
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`accomplish the functionality of Wirtgen’s floating hydraulic suspension “without having the exact
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`same plumbing arrangement” as Wirtgen. CAT-770_072063 at 2068. Finally, a comparison of
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`Caterpillar’s hydraulic schematics to Wirtgen’s also confirms the Caterpillar’s ride control feature
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`is substantially identical to Wirtgen’s floating hydraulic suspension. Compare CAT0004149 at
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`4411, CAT-770_002038 at 2041 with WA-ITC_00214328 at 4338.
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`2.
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`’530 & ’972 Patents—Intelligent Leg Control & Parallel to Surface
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`381. Wirtgen milling machines, including those that existed before the Accused
`
`Products were developed, included an elevation control system that used position-sensing leg
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`cylinders and had parallel-to-surface leveling features. Wirtgen’s machines practice the the ’530
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`and ’972 Patents. See, e.g., Final Initial Determination, ITC Inv. No. 337-TA-1067 (October 31,
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`2018), at 366 – 370 (finding Wirtgen machines practice the ’530 patent); WA-1718232
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`(identifying machines that practice the ’530 and ’972 patents).
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`382. As I discussed above, Caterpillar acquired two Wirtgen machines, tested these
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`machines, and then tore down and cataloged every component of these machines. Before this
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`testing and tear down, Caterpillar’s milling machines did not include analogous feature to
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`Wirtgen’s position-sensing leg cylinders or parallel-to-surface leveling. See Steffen Dep., 169:14-
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`20, Feb. 28, 2023 ([Seth Ogden]: “All right. And so that’s correct, the PM200 did not have any
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`type of feature to help it maintain the machine frame parallel to surface during operation; is that
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`correct?” [Craig Steffen] “As far as I know, it did not.”); see id. at 156:21-159:17. After this tear
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`down and testing, Caterpillar implemented position-sensing leg cylinders and a parallel-to-surface
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`leveling feature in the Accused Products. See id. at 162:1-171:22.
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`383.
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`In my opinion, Caterpillar’s leg sensors and track sensors ensure the machine
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`operates parallel to the surface, which is substantially the same function as Wirtgen’s parallel to
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`surface features. Indeed, a Caterpillar employee admitted that these parallel-to-surface features
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`were implemented because Caterpillar was “trying to provide direct competition with the Wirtgen
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`machine.” See Steffen Dep. at 166:9-13, Feb. 28, 2023 ([Seth Ogden]: “Do you know why
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`Caterpillar wanted to implement a parallel to surface feature in the PM600 machine?” [Craig
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`Steffen] “I believe we were trying to provide direct competition with the Wirtgen machine.”).
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`384. Finally, a comparison of Caterpillar’s electrical schematics to Wirtgen’s also
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`confirms the Caterpillar’s elevation control system is substantially similar, in the context of the
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`’530 and ’972 patents, to Wirtgen’s elevation control system. Compare CAT-770_002028-2037
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`(PM600 01A buld electrical schematic) and CAT0004149 (PM600 01A Technical Presentation)
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`at 4388 with WA-ITC_00221551 at 1695, 1670-71, 1696 (digital input signals IN_11, IN_12,
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`IN_13 and IN_14 correspond respectively to the front left leg, the front right leg, the rear left leg
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`and the rear right leg).
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`XIII. Conclusion
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`This report contains my complete opinions as of today based on discovery provided by
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`Defendant. I reserve the right to amend, modify, or supplement this report in the even additional
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`discovery is provided by Defendant, including any expert opinions offered by Defendant.
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`Executed on May 18, 2023
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`John Lumkes, Ph.D.
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