Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 1 of 16 PageID #: 25656
`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 1 of 16 PagelD #: 25656
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`EXHIBIT 15
`EXHIBIT 15
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 1 of 16 PagelD #: 25656
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`EXHIBIT 15
`EXHIBIT 15
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 2 of 16 PageID #: 25657
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`WIRTGEN AMERICA, INC.,
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`v.
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`C.A. No. 1:17-cv-00770-JDW
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff/Counterclaim-Defendant, )
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`Defendant/Counterclaim-Plaintiff. )
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`CATERPILLAR INC.,
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`REPLY EXPERT REPORT OF DR. JOHN H. LUMKES
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`1
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 3 of 16 PageID #: 25658
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`VII. Floating Hydraulic Suspension (’309 Patent)
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`A. Claim 29 – Four-Sided Stability Pattern
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`10. Claim 29 depends from claim 26. Dr. Rakow does not contest that the
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`Accused Ride Control Machines include every limitation of claim 26. See Rakow
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`Rebuttal Report, Section V (not contesting any element of claim 26).
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`11. Claim 29 recites: “The road-building machine of claim 26, wherein
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`the machine has a four sided stability pattern having a widest transverse dimension,
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`transverse to the forward direction of the chassis, which widest transverse
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`dimension falls within a footprint of the working roller or rotor.”
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`12. Dr. Rakow opines, “Dr. Lumkes has not shown that the Large Milling
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`Machines practice each and every element of claim 29.” Rakow Rebuttal Report,
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`¶67. Attempting to support this opinion, Dr. Rakow identifies several alleged
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`deficiencies with my opinion:
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`• “He [Dr. Lumkes] has not provided a definition for an ‘imaginary
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`pivoting axle.’” Rakow Rebuttal Report, ¶68.
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`• “He [Dr. Lumkes] does not identify the orientation in which the
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`imaginary axle will pivot or why the imaginary axle will pivot at the
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`midpoint.” Rakow Rebuttal Report, ¶69.
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`7
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 4 of 16 PageID #: 25659
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`• “Dr. Lumkes has not provided any references, calculations, or analyses
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`to support (i) the alleged shape of the stability pattern (‘diamond-
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`shaped’) and (ii) the placement of the alleged diamond-shaped stability
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`pattern as annotated in Figure 19.” Rakow Rebuttal Report, ¶72.
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`13.
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`I disagree with Dr. Rakow’s characterization of these alleged
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`deficiencies for the reasons discussed below.
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`1.
`Imaginary Axles That Pivot About a Midpoint
`14. Dr. Rakow states in his rebuttal report: “(1) “He [Dr. Lumkes] has not
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`provided a definition for an ‘imaginary pivoting axle.’” Rakow Rebuttal Report,
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`¶68. I disagree with Dr. Rakow’s characterization.
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`15. First, the ’309 Patent describes and illustrates the imaginary floating
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`axles. E.g., ’309 Patent, 3:6-11, 10:5-9, 10:19-32; 11:30-41; FIGs. 6a, 7.
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`8
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 5 of 16 PageID #: 25660
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`’309 Patent, FIG. 6a (depicting axles as black lines)
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`9
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 6 of 16 PageID #: 25661
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`’309 Patent, FIG. 7 (illustrating the midpoints of the imaginary axles at points A,
`B, C, and D)
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`16. Second, I described an “imaginary pivoting axle” in my opening
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`report—Dr. Rakow describes the same concept using different terminology in his
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`initial report. For example, as I explained regarding claim 26, when the ride control
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`feature is activated in the Accused Products, the hydraulic leg cylinders are
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`10
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 7 of 16 PageID #: 25662
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`positively coupled to one another such that adjacent leg cylinders move in equal
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`amounts but in opposite directions. Lumkes Initial Report, ¶¶ 127-133. Using Dr.
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`Rakow’s terminology, the leg cylinders extend and retract “contradirectionally.”
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`See Rakow Initial Report, ¶28 (describing such coupling as “contradirecitonal”).
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`Notably, Dr. Rakow does not contest that the Accused Ride Control Machines
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`have the positively coupled configuration of claim 26 (nor any other element of
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`claim 26). See Rakow Rebuttal Report, Section V (not contesting any element of
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`claim 26).
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`17. Second, when adjacent leg cylinders are positively coupled in a
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`contradirectional manner, a floating imaginary axle is formed between the two leg
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`cylinders, and the imaginary axle pivots about the midpoint. Dr. Rakow admits this
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`when explaining contradirectional coupling. Rakow Initial Report, ¶¶ 28-29. In
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`Figure 5 of his initial report, Dr. Rakow even depicts the imaginary axle (dashed
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`diagonal line) and the midpoint (dot within the light grey rectangle) about which
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`the imaginary axle pivots.
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`11
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 8 of 16 PageID #: 25663
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`Rakow Initial Report, FIG. 5
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`When all four leg cylinders are positively coupled (each in a contradirectional
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`manner) as described and claimed in the ’309 patent, an imaginary axle is formed
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`between each pair of leg cylinders.
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`2.
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`The Imaginary Axles and Midpoints Were identified and
`Explained in My Initial Report
`18. Dr. Rakow states in his rebuttal report: “He [Dr. Lumkes] does not
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`identify the orientation in which the imaginary axle will pivot or why the
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`imaginary axle will pivot at the midpoint,” Rakow Rebuttal Report, ¶69. Dr.
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`Rakow further states in his rebuttal report: “Dr. Lumkes has not provided any
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`references, calculations, or analyses to support (i) the alleged shape of the stability
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`pattern (‘diamond-shaped’) and (ii) the placement of the alleged diamond-shaped
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`stability pattern as annotated in Figure 19.” Rakow Rebuttal Report, ¶72. I disagree
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`with Dr. Rakow’s characterization.
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`12
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 9 of 16 PageID #: 25664
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`19.
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`I have clearly shown both the orientation of the imaginary axles and
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`the midpoints about which the axles pivot. Specifically, in the annotated CAD
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`model image of the Caterpillar machine in my Initial Report, these four imaginary
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`axles are depicted as red lines extending between the centers of each lifting
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`column. See Lumkes Initial Report at Appendix C, p. 35 (annotating
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`CAT0055043).
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`20. To determine the stability pattern, the midpoint of each imaginary
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`axle was identified and marked on the red line. See Lumkes Initial Report at
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`Appendix C, p. 35 (annotating CAT0055043). Then the adjacent midpoints were
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`connected with the annotated blue line. As shown, the resulting stability pattern is
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`a four-sided diamond shaped pattern, in which its widest transverse dimension falls
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`within a footprint of the working roller or rotor.
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`21. Finally, Dr. Rakow also suggests that the diamond shape stability
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`pattern depicted in the Caterpillar document, CAT_00055857 at 10, is for a
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`competitive machine, not Caterpillar’s machines. Rakow Rebuttal Report, ¶¶ 73-
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`13
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 10 of 16 PageID #: 25665
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`74. I disagree with this suggestion. The underlying image shows a four-sided
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`“diamond shape[d]” stability pattern.
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`Notably, Dr. Rakow does not contest that point. The title for the graph, the label
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`for the diamond’s vertices, and the label for the center of gravity (CG) each include
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`the phrase “PM6XX”:
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`Id. “PM6XX” is a nomenclature Caterpillar uses to refer to its PM600 machines.
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`22.
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`In view of this, I disagree that the phrase “competitive setup” next to
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`the image indicates that the illustrated four-sided diamond pattern is just for a
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`competitive machine. Instead, this phrase suggests that Caterpillar knew that its
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`milling machines had a stability pattern similar to competitive machines, namely,
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`Wirtgen’s machines. And as the text in the yellow bubble indicates, a four-sided
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`diamond shaped stability pattern significantly enhances machine capability.
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`14
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 11 of 16 PageID #: 25666
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`IX. Parallel to Surface (’972 Patent)
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`A.
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`The PM600 Series and PM800 Series Road Milling Machines
`Infringe.
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`38.
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`It is my understanding from my review of Dr. Smith’s Rebuttal Expert
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`Report that Dr. Smith has not provided any noninfringement opinion with respect
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`to claims 12 and 27 (which depend from claim 1) of the ’972 Patent. Rather, with
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`respect to those claims, he relies solely on his opinion that claims 12 and 27 “are
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`invalid due to being either anticipated or rendered obvious by prior art.” Smith
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`Rebuttal, ¶ 159.
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`39. Dr. Smith has opined that the Accused Caterpillar Machines do not
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`infringe claims 13 and 15 of the ’972 Patent. His opinions regarding these claims,
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`however, appear to be based solely on new arguments relating to claim
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`construction. Furthermore, Dr. Smith does not assert any differences between the
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`Accused Caterpillar Machines with position-sensing cylinders in the legs and those
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`with track angle sensors affecting the infringement analysis.
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`40.
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`In my opinion, Dr. Smith’s claim constructions, to the extent they can
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`be identified from his rebuttal report, do not accord with the plain and ordinary
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`meaning that a skilled artisan would have ascribed to the disputed terms.
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`41.
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`I address claim 13 and claim 15 individually below.
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`42. As an initial matter, it is my understanding that Caterpillar had notice
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`of at least the ’972 patent at least as early as March 13, 2014, and by September 2,
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`22
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 12 of 16 PageID #: 25667
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`2021, by virtue of the Amended Complaint in this action. See Caterpillar’s Resp. to
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`Wirtgen America’s First Set of Interrogatories, Resp. to Rog. No. 1, served on Feb.
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`7, 2023.
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`1.
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`Claim 13: The road milling machine of Claim 1, wherein:
`the controller is configured to establish the parallel
`orientation of the machine frame relative to the ground
`surface only when the controller performs a readjustment
`of the milling depth or a setting of a predefinable milling
`depth.
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`43. Claim 13 recites that “the controller is configured to establish the
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`parallel orientation of the machine frame relative to the ground surface only when
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`the controller performs a readjustment of the milling depth or a setting of a
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`predefinable milling depth.” Dr. Smith asserts that the claim term “when the
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`controller performs a readjustment of the milling depth” means “when the
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`controller is currently performing a readjustment of the milling depth.” Smith
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`Rebuttal, ¶ 162 (emphasis in original). In other words, Dr. Smith argues that
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`establishing the parallel orientation of the machine relative to the ground surface
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`must occur simultaneously with adjusting or setting the milling depth as opposed
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`to establishing the parallel orientation sequentially with adjusting or setting the
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`milling depth in connection with an operation to readjusting or setting the milling
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`depth.
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`44.
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`I disagree with Dr. Smith’s opinion. The plain and ordinary meaning
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`of “only when the controller performs a readjustment of the milling depth or a
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 13 of 16 PageID #: 25668
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`setting of a predefinable milling depth” does not require that the machine
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`simultaneously perform the step of establishing the parallel orientaton of the
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`machine. The claim language covers both simultaneous or sequential performance
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`of this step, so long as it occurs “only when the controller performs a readjustment
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`of the milling depth or a setting of a predefinable milling depth.” This limitation is
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`met by the Accused Caterpillar Machines. As I previously explained, “the
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`controller adjusts the milling depth and corrects the longitudinal inclination only if
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`needed as a result of the adjustment in milling depth.” Lumkes Rebuttal, ¶¶ 250,
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`262, 303.
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`45. Dr. Smith arrives at his faulty claim construction by improperly
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`reading a limitation into the claim—“is currently”—from the preferred
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`embodiment. Indeed, the portion of the specification that Dr. Smith’s quotes
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`begins: “In the preferred embodiment according to FIG. 8 . . . .” Smith Rebuttal, ¶
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`164. He then derives his claim construction from a sentence describing a mode of
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`operation of the preferred embodiment of Figure 8: “Thus, the establishing of the
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`parallel orientation of the machine frame 4 relative to the ground or traffic
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`surface 8 is not controlled actively by the control means 23, but passively in
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`that, in a currently performed readjustment of the milling depth or in the
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`process of newly setting a desired value for the predetermined milling depth, it
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`is decided whether the quantity of oil flowing via the two 4/3-way valves 84,86 for
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 14 of 16 PageID #: 25669
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`this purpose is to be guided into the front working cylinders 40,42 and thus into the
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`front lifting columns 12, or into the rear working cylinders 44,46 and thus into the
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`rear lifting columns 13.” Smith Rebuttal, ¶ 164 (emphasis in original). Thus, his
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`quotations make clear that his importation of “is currently” into the claim is
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`dervied from the preferred embodiment of Figure 8.
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`46.
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`In my opinion, a skilled artisan would have understood that the
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`preferred embodiment of Figure 8 is merely one example of an embodiment
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`wherein “the controller is configured to establish the parallel orientation of the
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`machine frame relative to the ground surface only when the controller performs a
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`readjustment of the milling depth or a setting of a predefinable milling depth.” As I
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`discussed in my rebuttal report on validity, Figure 8 is a schematic of the various
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`hydraulic control valves and hydarulic lines connecting the hydraulic cylinders of
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`the lifting columns to each other. Lumkes Rebuttal, ¶ 260. The control valves can
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`be opened/closed so as to either raise/lower one or both of the front lifting
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`columns; or raise/lower one or both of the rear lifting columns; or raise/lower both
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`front and rear. Lumkes Rebuttal, ¶ 260. Thus, this particular hydraulic arrangment
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`permits the controller to simultaneously adjust milling depth and establish PTS.
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`47. As I explained in my opening report on infringement, the evidence
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`shows that the Accused Caterpillar Machines meet the additional limitation of
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`claim 13 because they only establish PTS as part of maneuvers whereby the
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`25
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 15 of 16 PageID #: 25670
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`controller performs a readjustment of the milling depth or a setting of a
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`predefinable milling depth, such as a plunge cut or transition into the cut. See
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`Lumkes Initial Expert Report, ¶ 363; see also id. at ¶¶ 324-327. In my opinion, the
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`fact that establishing PTS occurs in sequence after milling depth has been adjusted
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`or set meets the limitation of “when the controller performs a readjustment of the
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`milling depth or a setting of a predefinable milling depth.” That is because the
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`evidence shows that the Accused Caterpillar Machines only establish PTS in the
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`event that or if the controller readjusts or sets milling depth. In the Accused
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`Caterpillar Machines, the only thing that causes the controller to establish PTS is
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`that readjustment or setting of milling depth.
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`2.
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`Claim 15: “The road milling machine of claim 1, wherein:
`the controller is configured to detect and control a milling
`depth of the milling roller; and the controller is configured
`to control the parallel orientation of the machine frame
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`26
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`Case 1:17-cv-00770-JDW Document 250-15 Filed 10/25/23 Page 16 of 16 PageID #: 25671
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`X.
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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 Defendant. I reserve the right to amend, modify, or supplement this
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`report in the even additional discovery is provided by Defendant, including any
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`expert opinions offered by Defendant.
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`Executed on July 7, 2023
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`John Lumkes, Ph.D.
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`29
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