Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 1 of 75 PageID #: 25532
`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 1 of 75 PagelD #: 25532
`
`EXHIBIT 10
`EXHIBIT 10
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 2 of 75 PageID #: 25533
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim-Defendant,
`
`
`
`v.
`
`
`CATERPILLAR INC.
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`) C.A. No. 1:17-cv-00770-JDW
`)
`)
`)
`)
`
`
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`
`
`
`
`
`
`
`
`INITIAL EXPERT REPORT OF DR. JOHN MEYER
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 3 of 75 PageID #: 25534
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`I.
`
`Introduction
`
`1.
`
`I submit this expert report on behalf of Plaintiff/Counterclaim-
`
`Defendant Wirtgen America, Inc. (“Wirtgen America” or “Plaintiff”) in the
`
`above-captioned proceeding. Wirtgen America asserts that
`
`Defendant/Counterclaim-Plaintiff Caterpillar, Inc. (“Caterpillar” or
`
`“Defendant”) make, sell, offer for sale, use, or import into the U.S. certain road
`
`milling and rotory mixer machines that infringe one or more claims of U.S.
`
`Patent Nos. 7,828,309; 8,118,316; 8,113,592; 9,010,871; 9,656,530; 8,424,972;
`
`7,530,641; 7,946,788; 8,511,932; 8,690,474; 9,879,390; 9,879,391; and
`
`RE48,268 (collectively, the “Patents-in-Suit” or “Asserted Patents”), among
`
`other patents.
`
`2.
`
`I have been retained by Wirtgen America to provide opinions
`
`regarding the infringement of U.S. Patent No. 7,530,641 (“the ’641 patent”).
`
`3.
`
`Further, I may be asked to review and comment on analysis or
`
`testimony provided by other experts or fact witnesses related to infringement,
`
`validity, and objective indicia of non-obviousness.
`
`4. My opinion concerns the following claims of the ’641 patent
`
`(independent claims in bold) (“Asserted Claims”): claims 11, 17, and 18.
`
`II.
`
`Summary of Conclusions
`
`5.
`
`Based on my review of the available evidence, it is my opinion
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 4 of 75 PageID #: 25535
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`95.
`
`I understand that the milling drum of the Accused Large Milling
`
`Machines is fixed to the machine frame. CAT_00056536 (Apr. 2016 PM620
`
`Parts Manual) at p. 479; see also CAT-770_004719 (Jan. 2017 PM620 01A
`
`Parts Manual) at 5198; CAT-770_005613 (Sep. 2020 PM622 01A Parts
`
`Manual); CAT-770_007018 (Feb. 2020 PM820 Parts Manual) at 7492; CAT-
`
`770_016399 (Oct. 2020 PM622 02B Parts Manual) at 6953; CAT-770_009018
`
`(PM825 01A Parts Manual) at 9383.
`
`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.
`
`41
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 5 of 75 PageID #: 25536
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`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.
`
`
`
`Claim 11[d]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “in that, the
`milling drum (12) remains coupled with the drive engine (6)
`
`42
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 6 of 75 PageID #: 25537
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`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)”
`
`98. Caterpillar does not dispute that the Accused Large Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix D, the Large Milling Machines
`
`perform the method step “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)” as recited in element 11[d].
`
`
`
`Claim 11[e]. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “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”
`
`99. Caterpillar claims that the Accused Large Milling Machines do
`
`not perform this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`43
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 7 of 75 PageID #: 25538
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`CAT0004149 (Aug. 2016 PM620 & PM622 Technical Presentation) at 4508-09;
`
`see also O’Donnell Dep. 275:9-279:9, 337-TA-1067, Jan. 5, 2018 (confirming the
`
`accuracy of the description in the training manual and that the same software
`
`applies to the PM600 series and PM800 series machines).
`
`
`
`Claim 17. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step “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”
`
`115. Caterpillar claims that Accused Large Milling Machines do not
`
`practice this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless, Caterpillar is incorrect for at
`
`61
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 8 of 75 PageID #: 25539
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`116. Claim 17 depends from Claim 15, “a 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).”
`
`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.
`
`62
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 9 of 75 PageID #: 25540
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`118. Additionally, as recited by claim 17, the PM620 performs the
`
`method step wherein “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.”
`
`119. Again, as explained above regarding the monitoring device
`
`features of claim 11, the PM620 uses the moldboard as a sensing device to
`
`indirectly monitor a distance between the milling drum and the ground. A
`
`person of ordinary skill in the art would understand that a moldboard is also
`
`known as a scraper blade, and is located behind the milling drum in the
`
`direction of travel. WA-ITC_00458142; WA-ITC_00458701; WA-
`
`ITC_00458702; WA-ITC_00458706; WA-ITC_00458707; WA-
`
`ITC_00458708; WA-ITC_00458709; WA-ITC_00458710; WA-
`
`ITC_00458711; WA-ITC_00458723; WA-ITC_00458724; WA-
`
`ITC_00458725; WA-ITC_00458726; WA-ITC_00458727; WA-
`
`ITC_00458728; WA-ITC_00458730; WA-ITC_00458736; WA-
`
`ITC_00458737; WA-ITC_00458738; WA-ITC_00458739; WA-
`
`ITC_00458740; WA-ITC_00458741; WA-ITC_00458742.
`
`
`
`Claim 18. The PM600 Series and PM800 Series Road
`Milling Machines Perform the Method Step: “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”
`
`120. Caterpillar claims that the Accused Large Milling Machines do
`
`63
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 10 of 75 PageID #: 25541
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`not practice this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Large Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`121. Claim 18 depends from Claim 15, “a 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).”
`
`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
`
`64
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 11 of 75 PageID #: 25542
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`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.
`
`123. Additionally, as recited by claim 18 and as explained in claim 11,
`
`the PM620 performs the method step wherein “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.”
`
`124. In addition to the literal infringement outlined above, it is also my
`
`opinion that the Accused Products infringe the claims 11, 17, and 18 under the
`
`doctrine of equivalents.
`
`C. The PM300 Series Road Milling Machines Infringe the
`Asserted Claims of the ’641 Patent
`125. As discussed above, I understand that the PM312 machine is
`
`representative of the entire PM300 series (including the PM310 and PM313).
`
`See D.I. 186, April 12, 2023 Joint Stipulation Regarding Representative
`
`Accused Products. Therefore, for the purposes of my detailed infringement
`
`analysis below and the infringement claim chart attached as Appendix E, I will
`
`refer only to the PM312 machines, with the understanding that my analysis of
`
`the PM312 machine applies with equal force to the PM310, PM312, and
`
`PM313 machines.
`
`65
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 12 of 75 PageID #: 25543
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`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 a
`
`milled ground surface, i.e., when not in milling mode.
`
`135. For example, a “signal is used in the rotor depth control logic, and
`
`to prevent inadvertent rotor surface contact[.]”
`
`CAT-770_043792 (Oct. 2021 PM3XX Technical Presentation) at 044123
`
`(emphasis added).
`
`
`
`136. At least the “Pre-Service” and “SERVICE Mode” position would
`
`constitute a raised position where the machine is not in milling mode.
`
`69
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 13 of 75 PageID #: 25544
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`
`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-.
`
`70
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 14 of 75 PageID #: 25545
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`Claim 11[d]. The PM300 Series Road Milling Machines
`Perform the Method Step: “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)”
`
`137. Caterpillar does not dispute that the Accused Small Milling
`
`Machines perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023.
`
`Accordingly, and as explained in Appendix E, the Accused Small Milling
`
`Machines perform the method step “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)” as recited in element 11[d].
`
`
`
`Claim 11[e]. The PM300 Series Road Milling Machines
`Perform the Method Step: “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”
`
`138. Caterpillar claims that the Accused Small Milling Machines do
`
`not perform this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Small Milling Machines. Regardless, Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`71
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 15 of 75 PageID #: 25546
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`Claim 17. The PM300 Series Road Milling Machines
`Perform the Method Step “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”
`
`157. Caterpillar claims that the Accused Small Milling Machines do
`
`not meet perform this step. See Caterpillar’s Resp. to Wirtgen America’s First
`
`Set of Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Small Milling Machines. Regardless Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`158. Claim 17 depends from Claim 15, “a 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).”
`
`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,
`
`88
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 16 of 75 PageID #: 25547
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`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.
`
`160. Additionally, as recited by claim 17, the PM300 series performs
`
`the method step wherein “a scraper blade (22) that is arranged behind the
`
`milling drum (12) when seen in the direction of travel is used as sensing
`
`device.”
`
`161. As explained above regarding the monitoring device features of
`
`claim 11, the PM312 uses at least the moldboard as a sensing device to
`
`indirectly monitor the distance between the milling drum and the ground. A
`
`person of ordinary skill in the art would understand that a moldboard is also
`
`known as a scraper blade, and is located behind the milling drum in the
`
`direction of travel. WA-ITC_00458142; WA-ITC_00458701; WA-
`
`ITC_00458702; WA-ITC_00458706; WA-ITC_00458707; WA-
`
`ITC_00458708; WA-ITC_00458709; WA-ITC_00458710; WA-
`
`ITC_00458711; WA-ITC_00458723; WA-ITC_00458724; WA-
`
`89
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 17 of 75 PageID #: 25548
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`ITC_00458725; WA-ITC_00458726; WA-ITC_00458727; WA-
`
`ITC_00458728; WA-ITC_00458730; WA-ITC_00458736; WA-
`
`ITC_00458737; WA-ITC_00458738; WA-ITC_00458739; WA-
`
`ITC_00458740; WA-ITC_00458741; WA-ITC_00458742.
`
`
`
`Claim 18. The PM300 Series Road Milling Machines
`Perform the Method Step: “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”
`
`162. Caterpillar claims that the Accused Small Milling Machines do
`
`not perform this step. See Caterpillar’s Resp. to Wirtgen America’s First Set of
`
`Interrogatories, Resp. to Rog. No. 19, served on Feb. 7, 2023. However,
`
`Caterpillar has not explained how this claim limitation is not performed by the
`
`Accused Small Milling Machines. Regardless, Caterpillar is incorrect for at
`
`least the reasons mentioned below. Furthermore, I reserve the right to respond
`
`to any non-infringement theories not expressly disclosed in Caterpillar’s
`
`interrogatory responses.
`
`163. Claim 18 depends from Claim 15, “a 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
`
`90
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 18 of 75 PageID #: 25549
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`to a pre-determined distance or to a minimum distance to be maintained
`
`between the milling drum (12) and the ground surface (2).”
`
`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.
`
`165. Additionally, as recited by claim 18 and as explained in claim 11,
`
`the PM312 performs the method step wherein “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.”
`
`D.
`
`The Accused Products Infringe Under the Doctrine of
`Equivalents
`
`166. In addition to the literal infringement outlined above, it is also my
`
`opinion that the Accused Products, including the Accused Large Milling
`
`Machines and the Small Milling Machines, infringe the claims 11, 17, and 18
`
`91
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 19 of 75 PageID #: 25550
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`XIV. Conclusion
`
`208. This report contains my complete opinions as of today based on
`
`discovery provided by Caterpillar. I reserve the right to amend, modify, or
`
`supplement this report in the event additional discovery is provided by
`
`Caterpillar, including any expert opinions offered by Caterpillar, or any
`
`additional inspections performed on Wirtgen or Caterpillar machines.
`
`Additionally, I understand that Wirtgen America and/or Caterpillar may use
`
`demonstratives at some point later during this investigation. To the extent that
`
`such demonstratives are used, I again reserve the right to amend, modify, or
`
`supplement this report.
`
`Executed on the 19th of May in 2023.
`
`
`
`
`
`
`
`___________________________
`John Meyer, Ph.D.
`
`
`112
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 20 of 75 PageID #: 25551
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`Appendix D
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 21 of 75 PageID #: 25552
`
`- 1 -
`
`
`
`functionalities. See D.I. 186, Apr. 12, 2023 Joint Stipulation at 2. Accordingly, to the extent components and functionalities are substantially
`
`All models of the Accused Large Milling Machines include substantially the same components and provide substantially the same
`
`after Wirtgen filed its complaint.
`this action, see, e.g., CAT_0028678 (June 2017 Patent Notice Email Chain). Caterpillar’s infringement of the ’641 Patent continued even
`Landscape), and has been on notice of its infringement of the ’641 Patent since at least June 16, 2017, by virtue of the Original Complaint in
`infringes the ’641 Patent. Caterpillar has had knowledge of the ’641 Patent since at least 2012, CAT_00053633 (Wirtgen Ten Year Patent
`infringing manner. Caterpillar’s end customers have used and continue to use the Accused Large Milling Machines in a manner that directly
`customers on how to use the Accused Large Milling Machines, including through its manuals, videos, training, and advertising, in an
`configured to infringe, and Caterpillar, directly and/or through its dealers and distributors, actively instructs, promotes, and encourages
`Milling Machines in a manner that infringes claims 11, 17, and 18 of the ’641 Patent. The Accused Large Milling Machines are specifically
`Caterpillar indirectly infringes by knowingly and intentionally inducing dealers and customers to use and operate the Accused Large
`
`770_043792 (Oct. 2021 PM3XX Technical Presentation) at 4030, 4033-35.
`Presentation) at p. 389; CAT-770_021849 (Jun. 2020 PM3XX Systems Operation Testing and Adjusting Manual) at 1926; CAT-
`2021 PM6XX & PM8XX Systems Operation Testing and Adjusting Manual); CAT_00057357 (Mar. 2021 PM6XX & PM8XX Technical
`manuals. See, e.g., CAT0007161 (Oct. 2016 PM620 & PM622 Systems, Operating, Testing & Adjusting Manual); CAT-770_014810 (May
`drum running, the customer is practicing the steps of the asserted claims, and is taught how to do so by Caterpillar’s training materials and
`can disengage. See Engelmann Dep. 146:9-147:17, Mar. 16, 2023. When a customer backs up, or drives in reverse and leaves the milling
`
`Caterpillar’s customers directly infringe as the reverse rotor shutoff feature is “present at all times” and is not something a customer
`
`to “[c]heck the reversing with rotor functionality”).
`forward direction but would shut off the rotor in reverse.”); CAT_00054680 (PM600 Software Testing) (describing 2014 performance tests
`CAT_00013338 (Mar. 2017 Meeting Notes) at 4 (“If the ECM is not seeing any of the moldboard sensors the machine would still mill in the
`Milling Machines. See, e.g., CAT_00003117 (Jan. 2017 Meeting Notes) at 2; see also CAT_00012831 (Oct. 2016 email) at 1;
`
`Caterpillar directly infringes by making, using, offering to sell, selling, and importing into the United States the Accused Large
`
`18 of the ’641 Patent, both literally and under the doctrine of equivalents.
`America, Inc. (“Wirtgen”). Caterpillar directly infringes claims 11, and 17–18 of the ’641 Patent and indirectly infringes claims 11, 17, and
`Milling Machines”) operate so as to practice claims 11, 17, and 18 of U.S. Patent No. 7,530,641 (“the ’641 Patent”), owned by Wirtgen
`PM825) road milling machines—including the 01A and 02A builds, and certain machines of the 02B build— (collectively, “Accused Large
`
`The PM600 series (including at least the PM620 and the PM622), and PM800 series (including at least the PM820, PM822, and
`
`Caterpillar’s Large Milling Machines Infringe U.S. Patent No. 7,530,641 under 35 U.S.C. § 271(a) and (b)
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 22 of 75 PageID #: 25553
`
`- 20 -
`
`
`
`surface, i.e., when not in milling mode.
`position by extending the lifting columns/leg posts to lift the frame and the milling drum away from milled ground
`Because the milling drum of the Accused Large Milling Machines is fixed to the frame, it is moved into a raised
`
`when it is not in milling mode.
`The Accused Large Milling Machines perform a method where the milling drum is moved into a raised position
`
`
`
`not in milling mode,
`raised position when it is
`drum (12) is moved into a
`11[c]. where the milling
`
`explain the technology and/or illustrate this feature.
`to show that the PM620 practices this feature. I also may rely upon demonstratives that I have not yet prepared to
`interrogatories, and responses to requests for admission, and/or inspection of the PM620 or a representative machine
` may also rely on additional expert testimony, other documents considered, witness testimony, responses to
`
` I
`
`element 11[b]. Thus, it is my opinion that claim element 11[b] is also met under the doctrine of equivalents.
`substantially the same function, in substantially the same way, to achieve substantially the same result as claim
`Large Milling Machines include a substantially similar damage avoidance/safety feature that is intended to perform
`insubstantial. Indeed, to the extent that any such differences exist, it is nonetheless my opinion that the Accused
`in claim element 11[b], a person of ordinary skill in the art would have understood these differences to be
`To the extent that any differences may exist between the Accused Large Milling machines and the features disclosed
`
`
`
`Accused Large Milling Machines
`
`U.S. Patent No. 7,530,641
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 23 of 75 PageID #: 25554
`
`- 21 -
`
`
`
`Large Milling Machines include a substantially similar damage avoidance/safety feature that is intended to perform
`insubstantial. Indeed, to the extent that any such differences exist, it is nonetheless my opinion that the Accused
`in claim element 11[c], a person of ordinary skill in the art would have understood these differences to be
`To the extent that any differences may exist between the Accused Large Milling machines and the features disclosed
`
`
`
`would constitute a raised position where the machine is not in milling mode.
`01 (May 2021) at 4844.) At least the “PRE-SCRATCH,” “PRE-SERVICE,” and “SERVICE HEIGHT” positions
`and Adjusting, PM620, PM622, PM820, PM822, PM825 Cold Planer Machine Systems, Publication No. M0125695-
`(CAT0007161 at 7188, 7202; CAT0004149 at 4359, 4389; see also CAT-770_014810, Systems Operation Testing
`
`
`
`Accused Large Milling Machines
`
`U.S. Patent No. 7,530,641
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 24 of 75 PageID #: 25555
`
`- 22 -
`
`
`
`
`
`(CAT_00056536 at p. 394 (annotated); see also CAT-770_007018 at 7473.)
`
`
`
`the milling drum.
`driven pulley, wherein the clutch transfers the torque of the driven engine to the driven pulley, which in turn drives
`The Accused Large Milling Machines include a clutch that is operably positioned between the drive engine and the
`
`milling drum corresponds to the rotating direction of the traveling devices.
`with the drive engine when in raised position and with a direction of travel in which the rotating direction of the
`The Accused Large Milling Machines perform a method characterized in that the milling drum remained coupled
`
`
`
`
`
`explain the technology and/or illustrate this feature.
`to show that the PM620 practices this feature. I also may rely upon demonstratives that I have not yet prepared to
`interrogatories, and responses to requests for admission, and/or inspection of the PM620 or a representative machine
` may also rely on additional expert testimony, other documents considered, witness testimony, responses to
`
` I
`
`element 11[c]. Thus, it is my opinion that claim element 11[c] is also met under the doctrine of equivalents.
`substantially the same function, in substantially the same way, to achieve substantially the same result as claim
`
`
`
`devices (8);
`direction of the traveling
`corresponds to the rotating
`milling drum (12)
`the rotating direction of the
`direction of travel in which
`raised position and with a
`drive engine (6) when in
`remains coupled with the
`the milling drum (12)
`11[d]. characterized in that,
`
`Accused Large Milling Machines
`
`U.S. Patent No. 7,530,641
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 25 of 75 PageID #: 25556
`
`- 23 -
`
`
`
`
`
`(CAT_00056536 at p. 391 (annotated); see also CAT-770_007018 at 7448.)
`
`Accused Large Milling Machines
`
`U.S. Patent No. 7,530,641
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Page 26 of 75 PageID #: 25557
`
`
`
`- 24 -
`
`
`
`Accused Large Milling Machines
`
`U.S. Patent No. 7,530,641
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 250-10 Filed 10/25/23 Pa