Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 1 of 8 PageID #: 25672
`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 1 of 8 PagelD #: 25672
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`EXHIBIT 16
`EXHIBIT 16
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 1 of 8 PagelD #: 25672
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`EXHIBIT 16
`EXHIBIT 16
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 2 of 8 PageID #: 25673
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`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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`REBUTTAL EXPERT REPORT OF DR. JOHN H. LUMKES
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 3 of 8 PageID #: 25674
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`adjustment may change the parallel orientation of the machine frame relative to the
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`ground. And if an adjustment is made to the parallel orientation, that adjustment may
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`change the milling depth. A change in any one or more of the lifting columns may
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`change the milling depth and/or the parallel orientation.
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`249. The patent describes one embodiment where the control of milling
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`depth is accomplished by adjusting only the front lifting columns. E.g., ’972 Patent,
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`5:49-53. And an embodiment is described where the control of parallel orientation
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`is accomplished by adjusting both the front and rear lifting columns. ’972 Patent,
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`3:33-44. By properly adjusting both front and rear lifting columns the machine frame
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`can be pivoted about the milling axis of the milling roller and thus the parallel
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`orientation can be adjusted without affecting the milling depth. ’972 Patent, 3:39-
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`44.
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`250. The primary function being performed by the controller is the control
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`of the milling depth, not the control of parallel orientation. The purpose of
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`establishing the longitudinal inclination of the machine frame parallel to the ground
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`is to improve control of milling depth. The patent tells us that the controller may be
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`“configured to establish the parallel orientation of the machine frame relative to the
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`ground surface only when the controller performs a readjustment of the milling depth
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`of the milling roller or a setting of a predefinable milling depth.” ’972 Patent, 13:15-
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`117
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 4 of 8 PageID #: 25675
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`19 (Cl. 13). In other words, the controller adjusts the milling depth and corrects the
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`longitudinal inclination only if needed as a result of the adjustment in milling depth.
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`251. The ’972 Patent teaches that there are many different ground engaging
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`sensors that can be used as part of a parallel orientation control system. Examples
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`include:
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`•
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`A front leg extension sensor
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`A rear leg extension sensor
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`A “stripping means” extension sensor (sometimes referred to as a
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`scraper blade extension sensor)
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`A side plate extension sensor
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`A band shoe extension sensor
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`An angle sensor attached between a lifting column and a pivotally
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`connected track
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`•
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`A pivotable side plate with two spaced extension sensors
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`252. The patent also explains that generally speaking “the longitudinal
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`inclination can be detected from at least a first distance value between the machine
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`frame and the treated ground, and at least one second distance value, displaced
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`relative to the first distance value in the traveling direction, between the machine
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`frame and the untreated ground, in connection with a measurement value for the
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`milling depth.” ’972 Patent, 2:34-39. This is generally true. As we will see for some
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`118
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 5 of 8 PageID #: 25676
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`261. FIG. 8 shows a hydraulic circuit that in combination with a properly
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`configured controller (as defined in claim 1) can be used to implement the features
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`of claims 13 and 14.
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`262. Claim 13 depends from claim 1 and further requires that the controller
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`be “configured to establish the parallel orientation of the machine frame relative to
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`the ground surface only when the controller performs a readjustment of the milling
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`depth of the milling roller or a setting of a predefinable milling depth.” ’972 Patent,
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`13:15-19 (Cl. 13). In other words, the controller adjusts the milling depth and
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`corrects the longitudinal inclination only if needed as a result of the adjustment in
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`milling depth.
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`263. In order to be able to automatically control both milling depth and PTS
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`you have to be able to automatically control both the front and the rear lifting
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`columns. As will be seen below, none of the prior art references relied upon by Dr.
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`Smith even have the capability of automatically controlling the rear lifting columns;
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`they all only provide automatic control of their front lifting columns which they use
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`to adjust milling depth. But if you are using the front lifting columns to adjust milling
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`depth you cannot then make a necessary change in PTS using just those front lifting
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`columns because that will again change your milling depth. FIG. 8 provides a
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`hydraulic circuit that can select the appropriate front and/or rear lifting columns to
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`123
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 6 of 8 PageID #: 25677
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`sensors. Neither sensor-integrated cylinders in the lifting columns nor track-angle
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`sensors were present in the PM-465 or PM-565. If the controllers of the PM-465 and
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`the PM-565 were already configured to automatically establish PTS, there would
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`have been no reason for Caterpillar to expend time and resources for additional
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`development.
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`301. Because the PM-465, PM-565, and RX-500 do not anticipate claim 1,
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`they cannot anticipate claims 13 or 27.
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`4.
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`Claim 13 is not anticipated by the PM-465, the PM-565, or
`the RX-500.
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`302. Claim 13 of the ’972 Patent, which depends from claim 1, further
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`requires that “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 of the milling roller or a setting of a predefinable
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`milling depth.”
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`303. As I have explained above, I understand claim 13 to simply require that
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`the controller adjusts the milling depth and corrects the longitudinal inclination only
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`if needed as a result of the adjustment in milling depth. That would be contrasted to
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`a system where the controller not only adjusted longitudinal inclination when it
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`adjusted milling depth, but also adjusted longitudinal inclination at other times when
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`153
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 7 of 8 PageID #: 25678
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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`there had been no “readjustment of the milling depth of the milling roller or a setting
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`of a predefinable milling depth.”
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`304. But with regard to the arguments Dr. Smith has made to the effect that
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`claim 13 is anticipated by the various prior-art references discussed above, Dr.
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`Smith’s presentation lacks any evidence that the controllers of any of these prior-art
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`machines are “configured to establish the parallel orientation of the machine frame
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`relative to the ground surface only when the controller performs a readjustment of
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`the milling depth of the milling roller or a setting of a predefinable milling depth.”
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`305. Dr. Smith tries to equate the requirements of claim 13 with what he has
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`labeled as the “passive” method of PTS control, but, as I explained before, this so-
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`called “passive” method of control occurs when the controller automatically
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`establishes PTS simultaneously with making any grade/slope control adjustments.
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`Thus, it still requires a controller configured to automatically establish PTS.
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`C. Claim 15 Is Not Anticipated by the PM-465 and Would Not
`Have Been Obvious Over the PM-565 and the RX-500 in
`View of the PM-465.
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`306. Claim 15 further requires that “the controller is configured to detect and
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`control a milling depth of the milling roller; and the controller is configured to
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`control the parallel orientation of the machine frame independently of control of the
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`milling depth of the milling roller.”
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`154
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`Case 1:17-cv-00770-JDW Document 250-16 Filed 10/25/23 Page 8 of 8 PageID #: 25679
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`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
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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 event additional discovery is provided by Defendant, including any
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`expert opinions offered by Defendant.
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`Executed on June 16, 2023
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`John Lumkes, Ph.D.
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`168
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