Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 1 of 7 PageID #: 25608
`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 1 of 7 PagelD #: 25608
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`EXHIBIT 12
`EXHIBIT 12
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 1 of 7 PagelD #: 25608
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`EXHIBIT 12
`EXHIBIT 12
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 2 of 7 PageID #: 25609
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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` Plaintiff/Counterclaim-Defendant,
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`CATERPILLAR INC.,
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` Defendant/Counterclaim-Plaintiff.
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`v.
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`Civil Action No. 1:17-cv-00770-JDW
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`CONTAINS INFORMATION
`MARKED
`CONFIDENTIAL PURSUANT TO
`PROTECTIVE ORDER
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`REBUTTAL EXPERT REPORT OF DR. CHRISTOPHER RAHN
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 3 of 7 PageID #: 25610
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`are transmitting the power to be coaxially aligned and parallel, to be as efficient as
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`possible, and provide maximum power to the milling drum. WA-0012879.
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`87. The 07-13-2020 second Office Action Response next responds to the
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`Examiner’s argument that the specification fails to reasonably convey to a skilled
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`artisan that the inventors were in possession of the spring/dampening elements that
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`supported the claimed subsets. In response, the testimony of Mr. Busley and Mr. Yur
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`are referenced, and give an accounting of how a skilled artisan would understand the
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`claimed first/low spring stiffness and a second/higher spring stiffness or rigidly
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`mounted elements. Mr. Yur points to the specification and identifies figures and
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`paragraphs that detail flexible elastic motor mounts for the drive engine and rigid
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`support for the hydraulic pump drive and/or clutch. WA-0012888. I agree with Mr.
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`Yur that a “lower spring stiffness” would be understood by a skilled artisan to
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`include elastic spring/damping elements. WA-0012889. Mr. Yur is correct that a
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`skilled artisan would have understood that an example of a “higher spring stiffness”
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`would be a “rigid manner” such that the bolting of components to the machine frame
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`would be included as a rigid manner or higher spring stiffness. WA-0012889-90,
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`WA-0012902-05, WA-0012911-15. Our opinions are supported by the specification,
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`including col. 2, ll. 34-36 which specifically states that “the other group can be
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`supported at the machine frame with high spring stiffness in a nearly rigid or rigid
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`manner.” WA-0012912. The inclusion of “rigid manner” is consistent with and does
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`48
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 4 of 7 PageID #: 25611
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`not broaden the meaning of “second/higher spring stiffness.” The specification and
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`testimony from the declarants support my opinion that a “rigid” connection, when
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`read in light of the entire specification, is one of a “high spring stiffness.” See, WA-
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`0012912-15. As stated in the second Office Action Response, “[a] completely rigid
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`connection is the highest possible spring stiffness.” WA-0012913. Mr. Busley’s
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`testimony provides further support for this opinion by providing similar discussion
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`and conclusions as Mr. Yur. WA-0012910-13.
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`88. The 07-13-2020 second Office Action Response next responds to the
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`Examiner’s statement in the 03-16-2020 Office Action that it is unclear if the
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`specification is “describing (a) the pumps 18 as projecting from the gearbox casing
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`26 resulting in a free interior space 28 between the pumps 18, or (b) the free interior
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`space as being an interior space of the gearbox casing 26.” WA-0012805. In
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`response, Mr. Busley’s testimony cited by the second Office Action states that based
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`on the figures and specification, a skilled artisan would understand that the “interior
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`space” of the pump drive “is defined by the surrounding structures which in Fig. 1
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`are identified by the numbers 16, 18, and 26.” WA-0012955. The hydraulic pump
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`drive 16, also referred to as the pump transfer case, includes several hydraulic pumps
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`that project from the casing outwards. WA-0012956. Mr. Busley iterates that a
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`hydraulic pump drive as described in the specification and claimed in the reissue
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`application was well known to skilled artisans because at the time, many large
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 5 of 7 PageID #: 25612
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`Figs 1, 2 (item 22 annotated)
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`95.
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`I disagree with Dr. Klopp’s opinion at paragraph 45 of his report that
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`claim element [1c] broadens the scope of the claim over the original ’659 Patent’s
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`claims. Klopp Rpt, ¶45. Claim element [1c] of the ’268 Patent clarifies that the scope
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`of claim element [1c] of the original ’659 Patent included supports that are rigid (i.e.,
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`infinitely stiff). As Dr. Klopp acknowledges, the predecessor specification and other
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`claims disclosed rigid mounting of the subset of components. “Dividing the drive
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`train into two groups makes it possible to support the groups of the drive train with
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`different degrees of rigidity on the machine frame for the purpose of reducing the
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`transmission of vibrations from the drive engine to the machine frame.” ’268 Patent
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`at 2:21- 25. “[T]he one group that comprises the drive engine, preferably a
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`combustion engine, is supported in a relatively soft manner at the machine
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 6 of 7 PageID #: 25613
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`frame, . . . the other group can be supported at the machine frame with high spring
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`stiffness in a nearly rigid or rigid manner, by way of which higher forces are
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`supported and higher outputs are transmittable as a result.” ’268 Patent at 2:44-54.
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`In the ’659 Patent, claim 3 further narrows claim 1 by calling for the “method of
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`claim 1, wherein: step (c) further comprises rigidly supporting the subset of the
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`components from the machine frame.” See ’659 Patent at 6:22-58.
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`96.
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`I disagree with Dr. Klopp’s opinion at paragraph 46 of his report that
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`the ’268 Patent’s claim elements [1.6-1.7] are entirely new from the ’659 Patent’s
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`claims. Klopp Rpt, ¶46. Claim 1 of the ’268 Patent specifies that the drive engine
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`component has an output axis aligned with an input axis of the hydraulic pump drive
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`component and with an input axis of the drive pulley prior to operation of the
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`construction machine. A skilled artisan would have understood that nothing is
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`perfectly aligned, even with the machine not in operation, perfect alignment is not
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`required by the limitation. A skilled artisan would have understood the claim only
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`to require the alignment within the manufacturing tolerances specified for coaxially
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`mounting the shafts of these drive train components during assembly. For example,
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`the background section of the ‘268 Patent explains that prior art machines required
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`the entire drive train, from the engine to the traction drive pulley, to be mounted to
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`the machine’s frame in a stiff manner so that the drive shafts of all drive train
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`components were coaxial and rigidly supported. ’268 Patent, 1:34-50. The drive
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`Case 1:17-cv-00770-JDW Document 250-12 Filed 10/25/23 Page 7 of 7 PageID #: 25614
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`Conclusion
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`This report contains my complete opinions as of today based on discovery
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`provided by Caterpillar. I reserve the right to amend, modify, or supplement this
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`Report in the event additional discovery is provided by Caterpillar, including any
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`expert opinions offered by Caterpillar.
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`Dated: June 16, 2023
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`_______________________
`Christopher Rahn, Ph.D.
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`151
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