Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 1 of 11 PageID #: 25144
`Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 1 of 11 PagelD #: 25144
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`EXHIBIT 8
`EXHIBIT 8
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`Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 1 of 11 PagelD #: 25144
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`EXHIBIT 8
`EXHIBIT 8
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`Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 2 of 11 PageID #: 25145
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.
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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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`Defendant/Counterclaim-Plaintiff.
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`INITIAL EXPERT REPORT OF DR. JOHN MEYER
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`Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 3 of 11 PageID #: 25146
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`58.
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`It is my understanding that Caterpillar then used the information it
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`gathered in both the Wirtgen machine teardowns and the customer surveys to
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`determine which Wirtgen features it wished to incorporate in its own
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`machines. See, e.g., CAT0115298; CAT0115827; CAT0115944;
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`CAT0099138; CAT0087933 (listing the “ability to reverse machine with rotor
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`engaged” as a “PM300 Raw Customer Requirement[]”); CAT0115700;
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`Domanus Dep. 31:4-35:4.
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`59. Numerous Wirtgen features were considered for inclusion into
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`Caterpillar’s accused cold planers, including some of the features-at-issue in
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`this action, including an “infinite reverse with rotor running using new
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`sensors.” See, e.g., Domanus Dep., 337-TA-1067, Jan. 5, 2018, 61-76,130-137
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`(discussing CAT0115700 (Subsystem Comments) and CAT0116678 (2011
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`Cold Planer Trade-off Event)).
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`60. Additionally, Caterpillar systematically monitored Wirtgen
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`America’s patents. I understand Caterpillar was aware of the Asserted ’641
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`Patent at least as early as December 2012, as evidenced by a spreadsheet
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`produced by Caterpillar. See CAT_00053633 (Wirtgen Ten Year Patent
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`Landscape), tab .csv)csv2012-12-03-10-26-51(1), row 78.
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`B. Representative Accused Products
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`61. Caterpillar’s PM300 Series (including at least the PM310, PM312,
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`22
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`Case 1:17-cv-00770-JDW Document 249-8 Filed 10/25/23 Page 4 of 11 PageID #: 25147
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`ground surface (2) takes a lower limit position which corresponds to a pre-
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`determined distance or to a minimum distance to be maintained between the
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`milling drum (12) and the ground surface (2)” for the reasons explained above
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`regarding the corresponding feature in claim 11.
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`123. Additionally, as recited by claim 18 and as explained in claim 11,
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`the PM620 performs the method step wherein “a side plate (24) arranged at the
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`side next to the milling drum (12) and/or a hood (18) enclosing the milling
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`drum (12) is used as a sensing device.”
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`124. In addition to the literal infringement outlined above, it is also my
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`opinion that the Accused Products infringe the claims 11, 17, and 18 under the
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`doctrine of equivalents.
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`C.
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`The PM300 Series Road Milling Machines Infringe the
`Asserted Claims of the ’641 Patent
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`125. As discussed above, I understand that the PM312 machine is
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`representative of the entire PM300 series (including the PM310 and PM313).
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`See D.I. 186, April 12, 2023 Joint Stipulation Regarding Representative
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`Accused Products. Therefore, for the purposes of my detailed infringement
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`analysis below and the infringement claim chart attached as Appendix E, I will
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`refer only to the PM312 machines, with the understanding that my analysis of
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`the PM312 machine applies with equal force to the PM310, PM312, and
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`PM313 machines.
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`65
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`to a pre-determined distance or to a minimum distance to be maintained
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`between the milling drum (12) and the ground surface (2).”
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`164. As already explained above, the PM600 and PM800 series
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`perform the method step recited in Claim 15. The operator of the Accused
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`Large Milling Machines, by using a control panel, electronic switch, or a
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`graphical user interface (“GUI”), raises the milling drum “by a predetermined
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`amount that is larger than a minimum distance between the milling drum (12)
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`and the ground surface (2), and in that a sensing device measuring towards the
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`ground surface (2) takes a lower limit position which corresponds to a pre-
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`determined distance or to a minimum distance to be maintained between the
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`milling drum (12) and the ground surface (2)” for the reasons explained above
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`regarding the corresponding feature in claim 11.
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`165. Additionally, as recited by claim 18 and as explained in claim 11,
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`the PM312 performs the method step wherein “a side plate (24) arranged at the
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`side next to the milling drum (12) and/or a hood (18) enclosing the milling
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`drum (12) is used as a sensing device.”
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`D.
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`The Accused Products Infringe Under the Doctrine of
`Equivalents
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`166. In addition to the literal infringement outlined above, it is also my
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`opinion that the Accused Products, including the Accused Large Milling
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`Machines and the Small Milling Machines, infringe the claims 11, 17, and 18
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`91
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`under the doctrine of equivalents. To the extent that any differences may exist
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`between the Accused Products machine and the features disclosed in Accused
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`Claims of the ’641 patent, a person of ordinary skill in the art would have
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`understood these differences to be insubstantial. Indeed, to the extent that any
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`such differences exist, it is nonetheless my opinion that the Accused Products
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`include a substantially similar damage avoidance/safety feature that is intended
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`to perform substantially the same function, in substantially the same way, to
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`achieve substantially the same result (e.g., to safely travel in reverse while the
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`milling drum is rotating in a raised position) as the above limitations of the
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`Asserted Claims of the ’641 patent. Thus, it is my opinion that each limitation
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`of the Asserted Claims are also met under the doctrine of equivalents.
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`E. Caterpillar and Caterpillar’s Customers Directly Infringe
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`167. I understand for there to be indirect infringement, there must be a
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`direct infringement. It is my opinion that Caterpillar in testing the Accused
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`Products performed all the claim elements of the Asserted Claims and is
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`therefore a direct infringer. Additionally, Caterpillar’s customers perform all of
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`the claim elements of the Asserted Claims and are also direct infringers of the
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`Asserted ’641 patent. Caterpillar is therefore also an indirect infringer of the
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`Asserted ’641 patent.
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`168. As explained above, when certain “logic and conditions are met,”
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`92
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`inclusion into Caterpillar’s accused cold planers, including some of the
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`features-at-issue in this action, including an “infinite reverse with rotor running
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`using new sensors.” See, e.g., Domanus Dep. 61-76, 130-137, 337-TA-1067,
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`Jan. 5, 2018, (discussing CAT0115700 and CAT0116678).
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`189. I understand that instead of using Caterpillar’s existing reverse
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`rotor shutoff design, after Caterpillar conducted customer surveys and tore
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`down Wirtgen’s machines, that Caterpillar decided to implement a new reverse
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`rotor shut off design that was substantially similar to Wirtgen’s exisiting
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`reverse rotor shut off design. I am therefore informed by counsel that after a
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`failure of its previous generation of cold planers in the marketplace,
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`Caterpillar’s deliberate and meticulous plan of: (1) conducting hundreds of
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`customer surveys; (2) thereby identifying, from a market perspective, desirable
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`features from Wirtgen milling machines; (3) tearing down Wirtgen machines;
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`and (4) actually including Wirtgen features—including those at issue in this
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`investigation—is strong evidence of nonobviousness of at least the ’641 patent.
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`190. Additionally, as already explained above, it is my understanding
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`that Caterpillar systematically monitored Wirtgen America’s patents, and that
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`Caterpillar was aware of the Asserted ’641 Patent at least as early as December
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`2012 as evidenced by a spreadsheet produced by Caterpillar. See
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`CAT_00053633.
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`103
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`B. Commercial Success
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`191. I have also been asked to provide an opinion as to whether
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`evidence of commercial success supports a finding of nonobviousness. I will
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`address technical aspects of the inventions as they related to the commercial
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`embodiments of the ’641 patent. As set forth below, Wirtgen America’s
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`milling machines are commercial embodiments of the ‘641 patent.
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`192. The ’641 patent relates to a technical feature on milling machines
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`that permits the milling drum to continue to rotate safely while the machine is
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`being operated in reverse. Many situations might require the milling machine
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`operator to safely drive the milling machine in reverse. For example, milling
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`operations often involve milling parallel strips of road surface such as two
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`lanes of a highway. Having milled the first lane, an operator will discontinue
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`milling and drive the machine back to the starting point of the next adjacent
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`lane. Due to the size of the milling machine, turning around may not be
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`possible, particularly if the machine must travel over uneven terrain, such as a
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`ditch or median, or enter a lane of live traffic.
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`193. The claimed invention provides for the automatic disengagement
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`of the rotor device in the event certain conditions are met as described above.
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`In addition to the safety benefits associated with this feature, the feature
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`increases efficiency by permitting a faster re-positioning for a second cut and
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`104
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`Thus, customers care about reducing downtime more than any other machine
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`feature.
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`196. Thus, the innovation disclosed in the ’641 patent resulted in
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`reduced machine downtime. For example, the damage avoidance/safety feature
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`disclosed in the ’641 patent enables faster re-positioning of the milling
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`machine for a second cut, and reduced wear on the clutch, engine, and other
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`drivetrain components. The innovation disclosed in the ’641 patent resulted in
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`both improved milling machine performance, as well as significant economic
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`gains for Wirtgen America.
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`197. Wirtgen America’s milling machines enjoy significant
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`commercial success, which I understand further evidences the nonobviousness
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`of the Asserted Claims of the ’641 patent. For example, Wirtgen brand road
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`milling machines enjoy about a seventy-five percent market share of the U.S.
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`road milling machine market. See, e.g., WA-0259438 (Wirtgen Marketshare
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`Spreadsheet).
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`198. I also understand that commercial sales of Caterpillar’s infringing
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`machines are attributable to Caterpillar’s infringing use of Wirtgen America’s
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`patented features. See Wirtgen’s Second Suppl. Resp. to CAT’s First
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`Interrogatories, Resp. to Rog. No. 9, served April 7, 2023.
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`199. In my opinion, the Asserted Claims of the ’641 patent is co-
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`106
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`extensive with the covered road milling machines, which I understand from
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`counsel means that the claims are therefore entitled to a presumptive nexus.
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`See Wirtgen America’s Sec. Suppl. Response to Interrogatory No. 9. I
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`understand from counsel that a nexus between the claimed invention of the
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`’641 patent and nonobviousness evidence exists where the evidence presented
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`is reasonably commensurate with the scope of the claims, not where the merits
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`of the claimed invention were readily available in the prior art. Even if the
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`covered road milling machines were not, in fact, co-extensive with the
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`Asserted Claims of the ’641 patent, it is my opinion that the sales of these
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`machines would still have a nexus to the claims.
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`200. For example, Caterpillar’s NPI Manual discusses the use of a
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`“Relative Importance” ranking as part of the “Tradeoff Analysis” to evaluate
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`features found during tear down and testing; “the Marketing Group will rate
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`each feature’s Relative Importance on a scale from 1 to 10 (10 being highest
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`importance).” CAT0100768 (LCP Tradeoffs) at 820-821; Domanus Dep.
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`134:15-21, 148:22-149:15, 337-TA-1067, Jan. 5, 2018.
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`201. Caterpillar’s NPI Manual rated each of the features “Able to
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`reverse with rotor running” and “Allow reversing with Rotor on w/ object
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`detection” with a score of 6 for the PM102 in the North America market.
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`CAT0114722 (PM200/W210 Features List Ranked), tab “PM102_W120F” at
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`107
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`XIV. Conclusion
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`208. This report contains my complete opinions as of today based on
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`discovery provided by Caterpillar. I reserve the right to amend, modify, or
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`supplement this report in the event additional discovery is provided by
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`Caterpillar, including any expert opinions offered by Caterpillar, or any
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`additional inspections performed on Wirtgen or Caterpillar machines.
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`Additionally, I understand that Wirtgen America and/or Caterpillar may use
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`demonstratives at some point later during this investigation. To the extent that
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`such demonstratives are used, I again reserve the right to amend, modify, or
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`supplement this report.
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`Executed on the 19th of May in 2023.
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`___________________________
`John Meyer, Ph.D.
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`112
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