Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 1 of 74 PageID #: 25331
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`THE PARTIES’ JOINT COMPILED STATEMENT OF MATERIAL FACTS IN
`RELATION TO CATERPILLAR’S MOTIONS TO EXCLUDE CERTAIN EXPERT
`TESTIMONY AND FOR SUMMARY JUDGMENT
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Telephone: (206) 883-2500
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Telephone: (212) 999-5800
`
`Dated: October 5, 2023
`11097068/11898.00005
`
`PUBLIC VERSION
`
`Public Version Dated: October 25, 2023
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 2 of 74 PageID #: 25332
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`HIGHLY CONFIDENTIAL-
`ATTORNEYS’ EYES ONLY-
`FILED UNDER SEAL
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`THE PARTIES’ JOINT COMPILED STATEMENT OF MATERIAL FACTS IN
`RELATION TO CATERPILLAR’S MOTIONS TO EXCLUDE CERTAIN EXPERT
`TESTIMONY AND FOR SUMMARY JUDGMENT
`
`Pursuant to this Court’s Policies and Procedures, Defendant Caterpillar Inc.
`
`(“Caterpillar”) submits this statement of material facts in support of its motions for summary
`
`judgment.
`
`I.
`
`1.
`
`’641 PATENT: NON-INFRINGEMENT OF CLAIMS 17 AND 18 AND
`ANTICIPATION OF CLAIM 11
`
`A.
`
`The Asserted Claims of the ’641 Patent
`
`Wirtgen America is asserting infringement of Claims 11, 17, and 18 of U.S. Patent
`No. 7,530,641 Patent (“the ’641 Patent”) (Ex. 3). See Ex. 10, Meyer Opening Report
`at ¶ 4.
`
`Wirtgen Response
`
`Wirtgen does not dispute that claims 11, 17, and 18 of the ’641 Patent are asserted.
`
`2.
`
`Claims 17 and 18 of the ’641 Patent (Ex. 3) each depend from Claim 15.
`
`Wirtgen Response
`
`Wirtgen does not dispute that claims 17 and 18 are each dependent on claim 15 of the
`
`’641 Patent.
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 3 of 74 PageID #: 25333
`
`3.
`
`Claim 15 of the ’641 Patent (Ex. 3) depends from Claim 11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that claim 15 depends from claim 11 of the ’641 Patent.
`
`4.
`
`Claim 12 of the ’641 Patent (Ex. 3) depends from Claim 11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that claim 12 depends from claim 11 of the ’641 Patent.
`
`5.
`
`Claim 13 of the ’641 Patent (Ex. 3) depends from Claim 11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that claim 13 depends from claim 11 of the ’641 Patent.
`
`6.
`
`Claim 11 of the ’641 Patent (Ex. 3) reads as follows:
`
`11. Method for working ground surfaces (2) with a construction machine (1) that
`is automotive by means of traveling devices (8) and in which a milling drum (12)
`supported in a machine frame (4) is driven by a drive engine (6),
`where the milling drum (12) is moved into a raised position when it is not in milling
`mode,
`characterized in that,
`the milling drum (12) remains coupled with the drive engine (6) when in raised
`position and with a direction of travel in which the rotating direction of the milling
`drum (12) corresponds to the rotating direction of the traveling devices (8),
`in that a distance is monitored between the rotating, raised milling drum (12) and
`the ground surface (2) or an obstacle located in front of the milling (12) when seen
`in the direction of travel, and
`in that the milling drum (12) is uncoupled from the drive engine (6), and/or the
`traveling devices (8) are uncoupled from the drive engine (6) and/or the machine
`frame (4) is raised and/or an alarm signal is generated when detecting that the
`deviation falls below a pre-determined distance between the milling drum (12) and
`the ground surface (2).
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 6 includes the text of claim 11 of the ’641 Patent.
`
`7.
`
`Claim 12 of the ’641 Patent (Ex. 3) reads as follows:
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 4 of 74 PageID #: 25334
`
`12. Method in accordance with claim 11, characterized in that the ground surface
`(2) is milled in up-milling mode, and in that the milling drum (12) is moved into a
`raised position for the purpose of traveling backwards, in which the milling drum
`(12) remains coupled with the drive engine (6).
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 7 includes the text of claim 12 of the ’641 Patent.
`
`8.
`
`Claim 13 of the ’641 Patent (Ex. 3) reads as follows:
`
`13. Method in accordance with claim 11, characterized in that the ground surface
`(2) is milled in down-milling mode, and in that the milling drum (12) is moved into
`a raised position for the purpose of traveling forward, in which the milling drum
`(12) remains coupled with the drive engine (6).
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 8 includes the text of claim 13 of the ’641 Patent.
`
`9.
`
`Claim 15 of the ’641 Patent (Ex. 3) reads as follows:
`
`15. Method in accordance with claim 11, 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 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).
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 9 includes the text of claim 15 of the ’641 Patent.
`
`10.
`
`Claim 17 of the ’641 Patent (Ex. 3) reads as follows:
`
`17. Method in accordance with claim 15, characterized in that a scraper blade (22)
`that is arranged behind the milling drum (12) when seen in the direction of travel is
`used as a sensing device.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 10 includes the text of claim 17 of the ’641 Patent.
`
`11.
`
`Claim 18 of the ’641 Patent (Ex. 3) reads as follows:
`
`18. Method in accordance with claim 15, characterized in that a side plate (24)
`arranged at the side next to the milling drum (12) and/or a hood (18) enclosing the
`milling drum (12) is used as a sensing device.
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 5 of 74 PageID #: 25335
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 11 includes the text of claim 18 of the ’641 Patent.
`
`12.
`
`The stipulated construction for “deviation” is “a change, difference or departure.”
`Dkt. No. 168.
`
`Wirtgen Response
`
`Wirtgen does not dispute that the stipulated construction for the term “deviation” in
`
`claim 11 of the ’641 Patent is “a change, difference or departure.”
`
`B.
`
`Representative Accused Products
`
`13. With respect to the ’641 Patent, the PM622 02B Build is representative of the
`PM600 and PM800 series machines, including the 01A, 02A, 02B, and 02C builds of
`the PM620, PM622, PM820, PM822, and PM825 machines. Dkt. No. 186.
`
`Wirtgen Response
`
`Wirtgen disputes No. 13 as inaccurate. The parties stipulated that “[f]or the ’309, ’316,
`
`’641, ’592, ’871, ’530, ’972, ’390, and ’391 Patents,” the “PM622 02B build” is representative
`
`of “PM620, PM622, PM820, PM822, PM825 machines after redesigns were implemented in
`
`02A build, 02B build, 02C build or by service letters.” Dkt. No. 186. The parties also stipulated
`
`that “[f]or the ’309, ’316, ’641, ’592, ’871, ’530, ’972, ’390, and ’391 Patents,” the “PM620 or
`
`PM622 01A build as originally manufactured” are representative of the “PM620, PM622,
`
`PM820, PM822, PM825 machines before any redesigns were implemented in 02A build, 02B
`
`build, or by service letters.” Id.
`
`Caterpillar Reply
`
`The parties substantively agree that Dkt. No. 186 represents the parties’ stipulation
`
`regarding representative products. The text of that document controls.
`
`14. With respect to the ’641 Patent, the PM310 01A build as originally manufactured is
`representative of the PM300 series machines, including the PM310, PM312, PM313
`machines before any redesigns or service letters were implemented. Id.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 6 of 74 PageID #: 25336
`
`Wirtgen Response
`
`Wirtgen disputes No. 14 as inaccurate. The parties stipulated that “[f]or the ’309, ’316,
`
`’641, ’592, ’871, ’530, ’972, ’390, and ’391 Patents,” the “PM310 01A build as originally
`
`manufactured” is representative of the “PM310, PM312, PM313 machines before redesigns
`
`were implemented in 02A build, 02B build, or by service letters.” Dkt. No. 186.
`
`Caterpillar Reply
`
`The parties substantively agree that Dkt. No. 186 represents the parties’ stipulation
`
`regarding representative products. The text of that document controls.
`
`15.
`
`The PM300, PM600, and PM800 series machines originally included the drum-
`exposure shutoff feature. See Ex. 39 (11/24/21 Barney Letter); Ex. 40 (4/02/22 CBI
`Ruling Letter). However, Caterpillar removed this feature from later models. See
`id. Wirtgen America is not accusing any machine with the updated design. Ex. 20,
`Meyer Tr. 86:8-21.
`
`Wirtgen Response
`
`The cited evidence is inadmissible and cannot support the proposition for which
`
`Caterpillar cites it. The “11/24/21 Barney Letter” and the “4/02/22 CBP Ruling Letter” are both
`
`inadmissible hearsay under Federal Rules of Evidence 801 and 802, as well as inadmissible
`
`under Rule 602 for lack of personal knowledge by the drafter of the document as to the
`
`statements set forth therein. The 11/24/21 Barney Letter is a letter from Caterpillar outside
`
`counsel James Barney to U.S. Customs and Border Protection personnel about Caterpillar’s
`
`“updated PM600 and PM800 Machines” that allegedly did not include the design accused of
`
`infringing the ’641 Patent – the “reverse-travel rotor-shutoff” feature. The 4/02/22 CBP Ruling
`
`Letter is a letter from U.S. Customs and Border Protection personnel to Mr. Barney regarding
`
`the updated PM600 and PM800 Machines. Neither Mr. Barney nor U.S. Customs and Border
`
`Protection personnel have personal knowledge about whether the reverse-travel rotor-shutoff
`
`feature was removed from legacy PM600 and PM800 machines via any service letter. Neither
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 7 of 74 PageID #: 25337
`
`Mr. Barney nor any U.S. Customs and Border Protection personnel were disclosed in
`
`Caterpillar’s initial disclosures or interrogatory responses as having personal knowledge
`
`relevant to any claim or defense.
`
`Furthermore, neither the “11/24/21 Barney Letter” nor the “4/02/22 CBP Ruling Letter”
`
`discusses whether the reverse-travel rotor-shutoff feature was removed from legacy PM600 and
`
`PM800 machines via any service letter. They are therefore immaterial and do not purport to
`
`support the proposition for which Caterpillar cites them.
`
`Additionally, the phrasing of this purported fact is misleading and inaccurate at least
`
`because it is unclear how Caterpillar is characterizing “later models” and “the updated design.”
`
`Fed. R. Evid. 403. Caterpillar provides no foundation for these characterizations. See Fed. R.
`
`Evid. 901.
`
`Caterpillar Reply
`
`Wirtgen America does not note any dispute regarding the factual statements that “The
`
`PM300, PM600, and PM800 series machines originally included the drum-exposure shutoff
`
`feature” and “However, Caterpillar removed this feature from later models.” Caterpillar also
`
`does not dispute as inaccurate Dr. Meyer’s deposition testimony cited at Ex. 20, Meyer Tr.
`
`86:8-21.
`
`Wirtgen America objects to the “11/24/21 Barney Letter” (Ex. 39) and the “4/02/22
`
`CBP Ruling Letter” (Ex. 40) as inadmissible hearsay and lacking foundation. As to the latter,
`
`Caterpillar witnesses at trial will be able to lay a foundation regarding the substance of this
`
`letter. Moreover, the April 2022 Customs Ruling Letter is a domestic public document from a
`
`United States governmental agency and is therefore self-authenticating and admissible under at
`
`least Fed. R. Evid. 902.
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 8 of 74 PageID #: 25338
`
`Similarly, neither document is inadmissible hearsay. First, Caterpillar does not use
`
`these documents here to prove the truth of the matters asserted therein regarding whether
`
`Caterpillar’s updated designs infringe Wirtgen America’s patents; rather, Caterpillar uses the
`
`documents solely to indicate that it informed Customs that Caterpillar had removed certain
`
`features in its updated designs. Further, even if hearsay these documents qualify under at least
`
`the hearsay exceptions of Fed. R. Evid. 803(6) (“Records of a Regularly Conducted Activity”)
`
`and 803(8) (“Public Records”).
`
`C.
`
`Non-Infringement of Claim 15
`
`16.
`
`As stated in Paragraphs 96-97 of the Meyer Opening Report (Ex. 10):
`
`96. Because the milling drum of the Accused Large Milling Machines is fixed to
`the frame, it is moved into a raised position by extending the lifting columns, or leg
`posts, to lift the frame and the milling drum away from milled ground surface, i.e.,
`when not in milling mode.
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 9 of 74 PageID #: 25339
`
`CAT0007161 (Oct. 2016 PM620 & PM622 Systems, Operating, Testing &
`Adjusting Manual) at 7188; CAT0004149 (Aug. 2016 PM620 & PM622 Technical
`Presentation) at 4359, 4389; see also CAT-770_014810 (May 2021 PM6XX &
`PM8XX Systems Operation Testing and Adjusting Manual) at 4844.
`
`97. Based on Caterpillar’s technical materials, at least the “PRE-SCRATCH,”
`“PRE-SERVICE,” and “SERVICE HEIGHT” positions would constitute a raised
`position where the machine is not in milling mode. See, e.g., CAT0007161 (Oct.
`2016 PM620 & PM622 Systems, Operating, Testing & Adjusting Manual) at 7188.
`
`See also Ex. 10, Meyer Opening Report at Appendix D at 20-22; 49-50.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 16 reproduces Paragraphs 96–97 of the Meyer
`
`Opening Report. Wirtgen notes that the recited “raised position” is not limited in scope to the
`
`“PRE-SCRATCH,” “PRE-SERVICE,” and “SERVICE HEIGHT” positions that Caterpillar
`
`references, to the extent that Caterpillar’s reproduction of these paragraphs is intended to imply
`
`otherwise, it is immaterial and misleading.
`
`Caterpillar Reply
`
`Wirtgen America does not dispute the substance of this statement but has appended its
`
`own superfluous fact that is inappropriate. In any event, Wirtgen America’s superfluous
`
`statement lacks specific citations to evidentiary support, as required by Judge Wolson’s
`
`Policies and Procedures Part II.B.5.
`
`17.
`
`As stated in Paragraph 117 of the Meyer Opening Report (Ex. 10):
`
`117. The PM600 and PM800 series perform the method step recited in Claim 15.
`The operator of the Accused Large Milling Machines, by using a control panel,
`electronic switch, or a graphical user interface (“GUI”), raises the milling drum “by
`a predetermined amount that is larger than a minimum distance between the milling
`drum (12) and the ground surface (2), and 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)” for the reasons explained above
`regarding the corresponding feature in claim 11.
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 10 of 74 PageID #: 25340
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 17 reproduces Paragraph 117 of the Meyer Opening
`
`Report.
`
`18.
`
`As stated in Paragraph 122 of the Meyer Opening Report (Ex. 10):
`
`122. As already explained above, the PM600 and PM800 series perform the
`method step recited in Claim 15. The operator of the Accused Large Milling
`Machines, by using a control panel, electronic switch, or a graphical user interface
`(“GUI”), raises the milling drum “by a predetermined amount that is larger than a
`minimum distance between the milling drum (12) and the ground surface (2), and
`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)” for the reasons explained above regarding the corresponding feature in claim
`11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 18 reproduces Paragraph 122 of the Meyer Opening
`
`Report.
`
`19.
`
`As stated in Paragraph 136 of the Meyer Opening Report (Ex. 10):
`
`136. At least the “Pre-Service” and “SERVICE Mode” position would constitute a
`raised position where the machine is not in milling mode.
`
`[IMAGE OF DOCUMENT OMITTED FOR READABILITY]
`
`CAT-770_043792 (Oct. 2021 PM3XX Technical Presentation) at 044030, 044032;
`see also CAT-770_021849 (Jun. 2020 PM3XX Systems Operation Testing and
`Adjusting Manual) at 1883.
`
`See also Ex. 10, Meyer Opening Report at Appendix E at 17-19 and 47.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 19 reproduces Paragraph 136 of the Meyer Opening
`
`Report, absent the excerpted images.
`
`20.
`
`As stated in Paragraph 159 of the Meyer Opening Report (Ex. 10):
`
`9
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 11 of 74 PageID #: 25341
`
`159. The PM300 series performs the method step recited in Claim 15. The operator
`of the Accused Small Milling Machines, by using a control panel, electronic switch,
`or a graphical user interface (“GUI”), raises the milling drum “by a predetermined
`amount that is larger than a minimum distance between the milling drum (12) and
`the ground surface (2), and 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)” for the reasons explained above regarding the
`corresponding feature in claim 11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 20 reproduces Paragraph 159 of the Meyer Opening
`
`Report.
`
`21.
`
`As stated in Paragraph 164 of the Meyer Opening Report (Ex. 10):
`
`164. As already explained above, the PM600 and PM800 series perform the
`method step recited in Claim 15. The operator of the Accused Large Milling
`Machines, by using a control panel, electronic switch, or a graphical user interface
`(“GUI”), raises the milling drum “by a predetermined amount that is larger than a
`minimum distance between the milling drum (12) and the ground surface (2), and
`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)” for the reasons explained above regarding the corresponding feature in claim
`11.
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 21 reproduces Paragraph 164 of the Meyer Opening
`
`Report.
`
`22.
`
`At his deposition, Dr. Meyer testified (Tr. 51:5-10) (Ex. 20):
`
`Q. What’s the plain and ordinary meaning in the field of the word
`“predetermined”?
`
`(Witness reviewing document.)
`
`A. “Predetermined,” I believe the plain and ordinary meaning of that would be
`something that’s known ahead of time.
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 12 of 74 PageID #: 25342
`
`Wirtgen Response
`
`Wirtgen does not dispute that No. 22 reproduces Dr. Meyer’s testimony from his deposition
`
`at Ex. 20, Tr. 51:5–10.
`
`23.
`
`An operator of the Accused Products can raise the machine to any permissible
`height the operator chooses within a given minimum and maximum. See Ex. 20,
`Meyer Tr. 124:12-131:6; Ex. 57, CAT00007161 at 7165-67; Ex. 58, CAT-770_021849
`at 021853-56.
`
`Wirtgen Response
`
`Wirtgen disputes No. 23. Dr. Meyer’s cited testimony makes no reference to “any
`
`permissible height the operator chooses within a given minimum and maximum.” See Ex. 20,
`
`Meyer Dep. Tr. 124:12–131:6, Aug. 17, 2023. Rather, Dr. Meyer’s testimony concerns the
`
`scratch and the prescratch positions. See id. Similarly, Ex. 57, CAT0007161 and Ex. 58, CAT-
`
`770_021849 do not reference a “permissible height the operator chooses within a given
`
`minimum or maximum.” Wirtgen notes that when going backwards, the “permissible height” is
`
`always greater than the predetermined thresholds for the moldboard and sideplates. Id.
`
`Caterpillar Reply
`
`Dr. Meyer admitted that an operator can “set any height of the machine frame short of .
`
`. . the service feature.” Ex. 20, Meyer Dep. Tr. 187:5-10. Dr. Meyer further testified that an
`
`operator “can raise the machine by any amount he or she chooses.” Ex. 20, Meyer Dep. Tr.
`
`180:17-181:1. Dr. Meyer further acknowledged that an operator may raise or lower the
`
`machine (and thereby adjust the milling drum) “simply by pushing [a switch] down until the
`
`machine is raised to the height the operator desires,” at which time “the operator lifts his or her
`
`hand off the button . . . and the machine stops raising.” Ex. 20, Meyer Dep. Tr. 128:10-19;
`
`129:5-11.
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 13 of 74 PageID #: 25343
`
`As to the various positions mentioned, there is no evidence that any user has ever raised
`
`any Accused Product to any of the enumerated positions when traveling in reverse. Indeed, Dr.
`
`Meyer acknowledged that the Accused Products cannot travel in reverse when in the SERVICE
`
`HEIGHT position. See Ex. 20, Meyer Dep. Tr. 186:16-187:4 (“Well, if the machine is at
`
`service height, it can’t be moving in reverse.”). He also conceded that a control panel used for
`
`lifting the machine and its drum do not permit the machine to be placed into either the
`
`SCRATCH or PRE-SCRATCH positions. See Ex. 20, Meyer Dep. Tr. 127:2-128:9. Finally,
`
`Dr. Meyer conceded that the PRE-SERVICE position is simply the maximum height the
`
`machine can be lifted without going into actual service mode, and that this position is reached
`
`simply by the operator manually lifting the switch until the legs stop extending. See Ex. 20,
`
`Meyer Dep. Tr. 128:10-19, 129:12-130:20.
`
`As further evidence that machine operators are not required or even instructed to raise
`
`the milling drum to a pre-determined height when traveling in reverse, Dr. Meyer
`
`acknowledged that the manuals simply instruct the operator, when driving in reverse, to raise
`
`the machine high enough to “clear all obstacles.” Ex. 20, Meyer Dep. Tr. 181:2-19; Ex. 36,
`
`Meyer Ex. 257, at CAT-7770_002074.
`
`24.
`
`There are no switches or buttons on the Accused Products for placing the machine
`into a prescratch position. See id.
`
`Wirtgen Response
`
`Wirtgen disputes No. 24. Dr. Meyer’s cited testimony was limited to what is depicted in
`
`Ex. 57, CAT0007161, and does not support the broader characterization of the Accused
`
`Products for which Caterpillar now cites it. Ex. 20, Meyer Dep. Tr. 127:19–128:9, Aug. 17,
`
`2023. No. 24 is also misleading, incomplete, and lacks foundation because Caterpillar does not
`
`indicate which “Accused Products” are referenced. Fed. R. Evid. 403, 901.
`
`12
`
`

`

`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 14 of 74 PageID #: 25344
`
`Caterpillar Reply
`
`Dr. Meyer indicates at Ex. 20, Meyer Dep. Tr. 125:19-126:3 that the control panel being
`
`discussed is for a PM600 machine which the parties have agreed is representative of both the
`
`PM600 and PM800 machines. See Ex. 20, Meyer Dep. Tr. 124:8-128:19; Ex. 87, Meyer Dep.
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`Exhibit 251 [CAT-0007161 at 7165]; Ex. 10, Meyer Opening Rpt. ¶ 96 (reprinting the same
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`page from Exhibit 251). For the PM600/PM800 machines, Dr. Meyer identified prescratch as
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`one of the “predetermined” positions for the purposes of Claim 15. See Ex. 10, Meyer Opening
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`Rpt. ¶¶ 96-97, 117, Appendix D at 20-22,
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`For the PM300 Machines, the only positions that Dr. Meyer points to as constituting the
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`raised position for Claim 11[c] is the “Pre-Service” and “SERVICE Mode” positions. See Ex.
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`10, Meyer Opening Rpt. ¶¶ 135-136 (citing CAT-770_043792 (Oct. 2021 PM3XX Technical
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`Presentation) at 044030, 044032, 044123; Ex. 58, CAT-770_021849 (Jun. 2020 PM3XX
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`Systems Operation Testing and Adjusting Manual) at 1883; see also Ex. 10, Meyer Opening
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`Rpt. Appendix E at 17-19. Dr. Meyer does not point to any additional positions for Claim 15’s
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`limitation and merely calls back to the positions stated for Claim 11[c]. See Ex. 10, Meyer
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`Opening Rpt. ¶¶ 159, 163, 164. Dr. Meyer does not identify a prescratch position as one of the
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`predetermined positions for the PM300. Therefore, Wirtgen America’s objection is inapposite.
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`In any event, the PM300 Machines Systems Operating Testing and Adjusting document
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`(Ex. 58, CAT-770_021849) contains a materially similar control panel as the control panel
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`discussed in Ex. 87, Meyer Dep. Exhibit 251 at page 7165 along with a material similar
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`instruction:
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`13
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`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 15 of 74 PageID #: 25345
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`Ex. 87, Meyer Dep. Ex. 251 at 7165
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`Ex. 58, CAT-770_021849 at 21854
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`Compare Ex. 87, Meyer Dep. Ex. 251 at 7165-7166 with Ex. 58, CAT-770_021849 at 21854-
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`21855. In both instances, there is no button or switch for placing the machine in a
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`predetermined position.
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`25.
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`An operator achieves the preservice height by holding the raise command down
`until the legs automatically stop extending. See id.
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`Wirtgen Response
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`Wirtgen disputes No. 25. Dr. Meyer’s cited testimony was limited to what is depicted in
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`Ex. 57, CAT0007161, and does not support the broader characterization of the machine
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`operation for which Caterpillar now cites it. Ex. 20, Meyer Dep. Tr. 129:5–11, Aug. 17, 2023.
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`Additionally, the phrase “holding the raise command down” lacks foundation and is
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`misleading. Fed. R. Evid. 403, 901. An operator may depress a button on the machine’s control
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`panel that causes the machine to raise.
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`Caterpillar Reply
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`Wirtgen America admits that an “operator may depress a button on the machine’s
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`control panel that causes the accused products to raise [sic].” The point is that because an
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`14
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`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 16 of 74 PageID #: 25346
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`operator may do so, there is no requirement (let alone an ability) to raise the machine (or the
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`milling drum) to a predetermined height.
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`As to the balance of Wirtgen America’s response, As discussed in SUF 24, Dr. Meyer’s
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`testimony pertains to the PM600 machines which are representative of the PM600 and PM800
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`series machines. But, the PM300 machines include a materially similar control panel with
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`materially similar instructions, as noted above in SUF (incorporated here by reference). Dr.
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`Meyer’s testimony at 129:5-11 (Ex. 20) is:
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`Q. So the way an operator can raise the machine is simply by pushing the upper
`switch down until the machine is raised to the height the operator desires, and then
`the operator lifts his or her hand off the button – or off the switch and the machine
`stops raising at that point, correct?
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`A. That’s one way, yes.
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`Dr. Meyer was testifying about a document cited in his report and was able to answer the
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`question. There is no lack of foundation nor was the question misleading.
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`26.
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`As stated during Dr. Meyer’s deposition (Tr. 186:16-187:10) (Ex. 20):
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`Q. The reverse rotor shut-off feature does not trigger when the machine frame is
`raised only to a certain height, correct?
`
`A. Well, if the machine is at service height, it can’t be moving in reverse. So it
`couldn’t be functioning in that situation. But if it’s at a height below that and the
`rotor is running, then I’m not aware of an instance where there’s a particular height
`which precludes the reverse rotor shut-off feature working.
`
`Q. And you would agree with me that the operator can set any height of the machine
`frame short of, as you say, the service feature and the machine can still move in
`reverse with the milling drum on, correct?
`
`A. That’s my understanding.
`
`15
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`

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`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 17 of 74 PageID #: 25347
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`Wirtgen Response
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`Wirtgen does not dispute that No. 26 reproduces Dr. Meyer’s testimony from his deposition
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`at Ex. 20, Tr. 186:16–187:10. For context, Wirtgen notes that the height of the machine must
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`always be greater than the predetermined thresholds when the machine is driving backwards.
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`Caterpillar Reply
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`Wirtgen America does not dispute the substance of this statement but has appended its
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`own superfluous fact that is inappropriate. In any event, Wirtgen America’s superfluous
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`statement lacks specific citations to evidentiary support, as required by Judge Wolson’s
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`Policies and Procedures Part II.B.5.
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`In any event, Wirtgen America’s superfluous statement is inapposite because Claim 15 (on
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`which both Claims 17 and 18 depend) requires the machine’s milling drum to be raised by a
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`predetermined amount. There is no evidence that any of the accused products can (or are) raised
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`by a predetermined height when traveling in reverse (the only operation that Wirtgen America
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`accuses of infringing).
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`27.
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`Dr. Meyer points to no instances of an operator placing the machine at prescratch,
`preservice, or service height when moving the machine in reverse. See Ex. 20, Meyer Tr.
`124:12-131:6; Ex. 57, CAT00007161 at 7165-67; Ex. 58, CAT-770_021849 at 21853-56; Ex.
`10, Meyer Opening Report at ¶¶ 96-97, 117, 122, 136, 159, 164, Appendix D at 20-22, 49-50,
`Appendix E at 17-19 and 47.
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`Wirtgen Response
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`Wirtgen disputes No. 27. First, the documents cited by Caterpillar do not establish No.
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`27, as they are merely instances where Dr. Meyer is describing what is shown in a particular
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`document and is not purporting to establish how the depicted machines work under all
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`circumstances. Specifically, Dr. Meyer’s cited testimony was limited to what is depicted in Ex.
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`57, CAT0007161. Ex. 20, Meyer Dep. Tr. 129:5–11, Aug. 17, 2023. Second, No. 27 is vague,
`
`16
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`

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`Case 1:17-cv-00770-JDW Document 250 Filed 10/25/23 Page 18 of 74 PageID #: 25348
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`misleading, and lacks foundation because Caterpillar does not characterize or explain its
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`meaning of “the machine.” Fed. R. Evid. 403, 901. Finally, the “raised position” is not limited
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`in scope to the pre-service height position, and No. 27 is misleading and inaccurate to the
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`extent that it implies otherwise.
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`Caterpillar Reply
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`Wirtgen America’s objection is inapposite because while it purported to dispute the
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`statement, it fails to cite any evidence where Dr. Meyer pointed to a single instance of an
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`operator placing a machine in a prescratch, preservice, or service height when moving in
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`reverse.
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`D.
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`Non-Infringement of Claim 17
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`28.
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`Claim Element 11[D] is as follows: “in that, the milling drum (12) remains coupled
`with the drive engine (6) when in raised position and with a direction of travel in
`which the rotating direction of the milling drum (12) corresponds to the rotating
`direction of the traveling devices (8).”
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`Wirtgen Response
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`Wirtgen does not dispute that claim 11 includes the text, “in that, the milling drum (12)
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`remains coupled with the drive engine (6) when in raised position and with a direction of travel
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`in which the rotating direction of the milling drum (12) corresponds to the rotating direction of
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`the traveling devices (8).” Dr. Meyer identified this element as [11.D] while Dr. Klopp
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`identified this claim element as [11.2] and [11.3].
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`29.
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`For the PM300, PM600 and PM800 series machines, in his Opening Report, the only
`traveling direction that Dr. Meyer accuses of satisfying Claim Element 11[D] is
`when the accused product is “propelling in reverse, i.e., with the tracks or wheels
`rotating counterclockwise when viewed from the right of the machine.” See Ex. 10,
`Meyer Opening Report at ¶ 98, Appendix D at Claim Element 11[d] (and documents
`cited therein), ¶ 137, Appendix E at Claim Element 11[d] (and do